The recent Full Court decision in Telstra v Phone Directories highlights the continuing difficulties experienced by brand owners in obtaining trade mark protection related to colours and, in particular, words denoting colours.  The case also provides further guidance on the Court’s approach to inherent distinctiveness following the High Court’s decision in Cantarella Bros v Modena Trading.

In mid-2003, Telstra applied to register the word YELLOW as a trade mark in relation to various directory-related goods and services.  The application was opposed by Phone Directories.  On appeal to the Federal Court, the primary judge held that YELLOW was not inherently distinctive of the relevant goods and services.  Because Telstra could not establish the word YELLOW was factually distinctive before the filing date, the application was refused.

On appeal, the Full Court upheld the primary judge’s decision.   The evidence showed that competing traders used the colour yellow in relation to directories, and consumers recognised the colour as signifying directories.  Because the word YELLOW describes thecolour — and the colour signifies directories — the Court held that word YELLOW was not inherently distinctive of directory-related goods and services.

The Court also provided further guidance on the two aspects of inherent distinctiveness identified in Cantarella Bros, the “ordinary signification” of the mark and the legitimate need of other traders to use the mark (at [126]):

…[The two issues] are closely related questions.  Often the answer to the first question [ordinary signification] will provide the answer to the second question [legitimate need of other traders].  Sometimes the issues will be relatively clear and little evidence will be required…  In other cases, evidence might be called on the issue of the ordinary signification of the word mark…  Evidence of other traders about their use of the mark, or something similar, seems to be admissible on the second question [legitimate need of other traders]…  It is important to note the possible dual significance of such evidence.  Evidence of other traders using the word yellow or the colour yellow in connection with their print and online directories could be evidence of the ordinary signification of the YELLOW mark and of the fact that other traders might want to use the word to describe their goods or services.