Laura Trapnell | 13th January 2016

All is not sunny in the world of directories down under


Laura Trapnell | 13th January 2016

All is not sunny in the world of directories down under

We love our trade mark cases: they are usually fun, involve interesting products/services, lead to a real wrangling between the parties in terms of legal argument and sometimes full blown fisty cuffs and are often surprising at the eye-watering level of cost that some companies incur in their attempts in appealing a lower court decision to refuse registration of trade marks that was denied registration at the first hurdle because it is inherently incapable of registration. So we are always delighted to read the ‘next round’ of international trade mark wars and this one in Australia has caught the IPkat’s eye.

The Full Federal Court of Australia has recently upheld a lower, Federal Court decision to deny Telstra (think ‘Yellow Pages’) registration of the YELLOW word mark. The court confirmed the decision that YELLOW was not inherently adapted to distinguish the designated goods or services from the goods or services of other persons and was also deceptively similar to other, previously registered marks – the proprietors of which had opposed the Telstra application.

As in the equivalent UK legisltation, under section 41 of the Australian Trade Marks Act, an application for registering the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods and/or services from the goods and/or services of other persons. In determining this, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

In assessing this question, the Full Court held the YELLOW mark to be descriptive. Descriptive terms (cf generic terms) can be inherently adapted to distinguish, but only if they can be said to have acquired a secondary meaning and become distinctive of the goods and/or services of the applicant.

Next, the court looked at the ordinary signification of the word, concluding that ‘yellow’ is descriptive of the colour widely used in respect of print and online directories, and it is likely that consumers recognise directories generally by reference to that colour. Consequently, other traders were likely, without improper motive, to want to use the word yellow to signify their goods in a way that would infringe the YELLOW mark. This meant that the word was merely descriptive rather than being inherently adapted to distinguish. This reasoning is a little more harsh in my view, but this may be because ‘Yellow Pages’ is, as far as we are aware, the only telephone directory to be yellow in colour in the UK. We already know that there had been two oppositions filed to the YELLOW Telstra application in Australia – by Pty Ltd and by Phone Directories Company Australia Pty Ltd – both of whom, obviously objected to Telstra having a monopoly over the word YELLOW in respect of such services.

This appeal raises an interesting issue in the way it creates a link between a colour and the word describing that colour. This was an application to register the WORD ‘Yellow’ not an application to register yellow as a pantone. In its appeal, Telstra argued that the primary judge was wrong in linking the two by stating that ‘it is difficult to draw a distinction between a word denoting a colour and a colour when dealing with the issue of a trade mark’s inherent capacity to distinguish’. Telstra was well aware that the colour was used in connection with print and online directories but it rejected the court’s assertion that the YELLOW mark could be said to signify these directories. I think this argument is correct and would have had more weight in the UK without the presence of the other two ‘yellow’ directories.

However, in Australia the Full Court rejected this argument and believed that ‘there is clearly a link between a word describing a colour and the colour itself and the two ‘cannot be [cleanly] separated’. It continued, that if the colour yellow (‘with or without the word’) has come to signify print and online directories, then consumers and traders may in some cases come to understand the word describing the colour to signify them as well – a similar analogy in the UK is green waste garbage bags.

Telstra also appealed against the primary judge’s decision that the YELLOW mark was deceptively similar to three previously registered marks which related to comparable classes of goods and services: THE YELLOW ENVELOPE, YELLOW DUCK and YELLOW ZONE. The Full Court overturned this aspect of the decision, quite rightly in our view, holding that these marks were ‘phonetically and visually distinct’, each conveying a different idea to the YELLOW mark. This was the right decision in our view, particularly as none of the prior registrations featured just the word YELLOW .

We thought you might enjoy this sojourn into sunnier climes on Monday morning, We have a similar understanding of ‘inherently adapted to distinguish’ in the UK – with our own recent caselaw supporting this two pronged approach of required ‘secondary meaning’ and public perception connection and it has been interesting to consider whether our UK judges would have come up with a similar decision.