Intellectual Property Law Update - “Yellow” not inherently adapted to distinguish – who knew?

Intellectual Property
List G Bg 4640
By

The Federal Court has found that YELLOW (the word, not the colour) is not inherently adapted to distinguish for the purposes of s 41 of the Trade Marks Act 1995 (Cth) for various goods and services relating to telephone directories.

Background

Telstra applied for the mark in 2003.  By then Telstra had branded its business directories YELLOW PAGES and printed them on yellow paper for nearly three decades.  The judge found, however, that prior to the lodgement date (which is the relevant date for removal applications), it had not used the word YELLOW, or indeed the colour yellow, “as a trade mark“.  As a result, the mark’s lack of inherent adaptability could not be remedied by pre-lodgement use via s 41(6) TMA.

Distinction

The Court accepted that Telstra had made extensive use of the mark, as a trade mark, after the lodgement date, but this use is not relevant to distinctiveness under s 41(6).

On the question of inherent adaptation to distinguish, Murphy J pointed out that:

  1. Whether a trade mark is inherently adapted to distinguish is determined by reference to the test stated by Lord Parker in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 at 635:


…whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods.

This, his Honour said,”reflected the natural disinclination of the Courts to allow traders to obtain a monopoly, through registration of a trade mark, in words or signs that others may legitimately desire to use”.

The evidence showed that “business directories around the world are often named Yellow Pages, and yellow coloured pages and yellow covers are commonly used on print business directories“.

His Honour considered YELLOW to be descriptive of the relevant goods and services because:

  1. yellow is a word in ordinary usage which describes a primary colour“;
  2. the word yellow is not a made up, meaningless or fanciful word which is distinctive as a result“;
  3. the word yellow is not distinctive on the basis that it is dislocated from or inappropriate to the designated goods and services, such as in the often used example of “North Pole bananas”“; and
  4. yellow is not an “arbitrary term” but rather “yellow was the colour commonly used in respect of print and online directories by Telstra and other traders in Australia and also by other traders overseas.”


As a result, the Court reversed the findings of the Trade Marks Office which, after opposition proceedings, permitted the mark to proceed to registration.

In obiter comments, the Court also rejected the mark as being deceptively similar to several other marks on the register at the relevant date (s 44, TMA) including YELLOW DUCK, THE YELLOW ENVELOPE and YELLOW ZONE.

In the same judgment, Murphy J upheld Telstra’s challenge to the registration of YELLOWBOOK by another party on the grounds that it is deceptively similar to YELLOW PAGES (Telstra’s registered mark) and pursuant to s 60 (likely to cause confusion due the reputation of another mark) and s 43 (unlawful because use likely to be misleading or deceptive).

Murphy J’s application of s 41 TMA may have to be reconsidered in the light of the High Court’s decision in Cantarella which will be heard later this year.

* To view Ben Gardiner's blog, North Pole Bananas, or to sign up to receive email notifications each time a new post is published, please click here

List G Bg 4640
By

Ben Gardiner practises primarily in intellectual property litigation

Share on