Telstra’s YELLOW PAGES rebrand to YELLOW was before the Full Court of the Federal Court showcasing its 30 trade marks containing yellow and $30 million marketing campaign. Telstra had appealed against a decision of Justice Murphy of the Federal Court that the YELLOW trade mark should not be registered. Last week, the Full Court gave the YELLOW trade mark registration the red light, dismissing Telstra’s appeal.
The case highlights two common grounds for objections and oppositions to trade mark registration – (1) the trade mark is descriptive and therefore not sufficiently adapted to distinguish the goods and services for which registration is sought (under section 41 of the Trade Marks Act 1995 (Cth) (Act)); and (2) the trade mark is substantially identical with or deceptively similar to a trade mark that is already registered for similar or closely related goods or services under section 44 of the Act.
The story of the YELLOW PAGES began in 1975 when Telstra launched its print directories. In 2003, Telstra (operating its directories through a subsidiary, Sensis) applied to register YELLOW as a trade mark and three years later, it rebranded the YELLOW PAGES as YELLOW. At the same time, a competitor, Yellowbook.com.au Pty Ltd (Yellowbook) launched its online directory and applied to register “Yellowbook” and “www.yellowbook.com.au” as trade marks. The Managing Director of Yellowbook, Mr Khoury, and another competitor, Phone Directories Company Australia (PDCA), opposed acceptance of Telstra’s YELLOW trade mark.
Two delegates of the Registrar of Trade Marks separately rejected the oppositions by Yellowbook and PDCA (the Opponents) and ordered that the YELLOW trade mark proceed to registration. The Opponents appealed against these decisions and, last year, Justice Murphy upheld the appeal and refused to allow the YELLOW trade mark to proceed to registration under sections 41, 44 and 59 of the Act.
Telstra was granted leave to appeal to the Full Court of the Federal Court against Justice Murphy’s decision under sections 41 and 44 of the Act.
Chapter One – Descriptiveness
A fundamental requirement of trade mark registration is that the trade mark is sufficiently adapted to distinguish the goods and services for which registration is sought. If the trade mark is descriptive of the goods and services, section 41 of the Act requires the Registrar to refuse to register the mark.
Telstra submitted that Justice Murphy erred by: (1) finding that the word yellow (as opposed to the colour yellow) signified directories; and (2) even if the word yellow signified directories, this did not make the word yellow descriptive.
The Full Court rejected Telstra’s submissions. The Court held that the question of whether a word trade mark is descriptive can be resolved by reference to the ordinary signification of the mark and whether other traders would legitimately need to use the mark for their goods or services. The Full Court found that the word yellow is descriptive of directories because the colour yellow signifies directories.
The Full Court concluded that the YELLOW mark had no inherent adaption to distinguish Telstra’s goods and services and on that basis determined that the mark should not proceed to registration.
Chapter Two – Deceptively Similar Trade Marks
Telstra also appealed against the finding that YELLOW could not be accepted for registration as it was deceptively similar to trade marks that were already registered for similar services.
On this point, the Full Court held that the cited trade marks (YELLOW ENVELOPE, YELLOW ZONE and YELLOW DUCK) had “clear phonetic and visual differences” when compared with the YELLOW mark and that the word “yellow” was not a “strongly distinguishing feature” of the cited trade marks. The YELLOW mark also gave rise to different ideas from the cited marks by using yellow as a noun as opposed to an adjective.
The Full Court’s decision on this point is of no comfort to Telstra given that it had already decided the YELLOW mark is descriptive and not registrable.
Chapter Three – Yellowbook Appeal
Telstra’s appeal was heard at the same time as Yellowbook’s appeal against the Federal Court’s decision to refuse to allow the YELLOWBOOK and www.yellowbook.com.au trade marks to proceed to registration. Yellowbook’s appeal was dismissed.
Any special leave application to the High Court (for either appeal) will need to be made by 2 December.
This decision is a timely reminder of the principles to be considered when assessing the distinctiveness of a mark and whether it is deceptively similar to other trade marks. In short:
- a trade mark that is made up or inappropriate for the chosen goods and services is best placed to be distinctive and therefore registrable;
- if a colour, shape, scent or other characteristic cannot be registered as a trade mark because it is descriptive of the goods and services, a word trade mark describing that characteristic may also be refused registration; and
- compare the phonetic, visual and conceptual qualities of conflicting marks when considering whether they are deceptively similar.
The Full Court’s decision can be accessed by clicking here (Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd  FCAFC 156).
Thomson Geer acts for clients in relation to all aspects of trade mark protection including registration and initiating and defending infringement proceedings. Please contact Lauren Burke on 03 9641 8634 or firstname.lastname@example.org for more information.
The author would like to thank Paul Noonan for his contribution to this article.
 Khoury v Telstra Corporation  ATMO 36 and Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited (2011) 93 IPR 513