Phone Directories Company Australia P/L v Telstra
Corp Ltd  FCA 373
Colour trade marks and word marks referring to colours –
inherent adaptation to distinguish
T applied to register YELLOW as a trade mark for print and
online phone directories and other goods and services. P and
Yellowbook.com.au Pty Ltd (Y) unsuccessfully opposed that
application. The delegate found that YELLOW was not directly
descriptive of the services covered by the application and that the
mark had acquired some capacity to distinguish T's services
given its extensive use before the application date.
Y applied to register YELLOWBOOK.COM.AU as a trade mark for
print and online phone directories and other goods and services. T
unsuccessfully opposed that application.
Relevant grounds of opposition were s 41 (not or insufficiently
inherently adapted to distinguish/no acquired distinctiveness
through use), s 44 (substantially identical with or deceptively
similar to an existing registered mark in respect of similar goods
or services) and s 59 (no intention to use).
The unsuccessful parties appealed to the Federal Court with the
appeals being heard together.
COURT DECISION AND REASONING
T's YELLOW application was rejected under s 41 – not
inherently adapted to distinguish. Despite lodging extensive
evidence, T had failed to discharge the onus to show that as a
result of its use of YELLOW, the mark was associated with it. The
pre-application use by T of "YELLOW" as part of other
trade marks (eg YELLOW PAGES) was not use of YELLOW on its own and
use of "YELLOW" by itself was just a shorthand reference
to T's other marks. The post-application use was also
insufficient for similar reasons. T's surveys showed that an
association only arose when participants were prompted in relation
to YELLOW PAGES.
T's YELLOW application also rejected under s. 44 – on
the grounds that it was deceptively similar to prior registered
marks including YELLOW DUCK and YELLOW ZONE.
The judge referred to prior decisions and commentary that colour
marks are generally not inherently adapted to distinguish. By
analogy, the same applies to a word mark denoting a colour.
The evidence showed that yellow is in common use in Australia
and overseas for directories. Accordingly, it was likely that other
traders, without improper motives, may want to use the colour/word.
Evidence of the colour yellow being in common use overseas was
relevant to the likely conduct of traders in Australia.
P's YELLOWBOOK.COM.AU application was rejected under s. 44
as being deceptively similar to T's YELLOW PAGES. The addition
of .com.au does not mean the mark is treated differently. The
distinctive and important feature of each mark is
"Yellow". "Pages" and "book" connote
The new owner of Sensis (the owner of the Yellow Pages business
previously owned by T) has appealed to the Full Federal Court. T
will play no role in the appeal.
Colour trade marks (including a word for the colour) are
difficult to obtain without substantial evidence of use of the mark
(independently of other composite marks incorporating the colour or
Adding .com.au to a mark does not trigger any special
considerations in establishing distinctions from existing
Overseas use may be relevant to the likelihood that Australian
traders will legitimately want to use the mark.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
Shelston IP has been awarded the MIP Global Award for
Australian IP Firm of the Year 2013.
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