Who could forget the classic Australian ‘Goggomobil’, the HELLO YELLOW jingle or the ‘Let your fingers do the walking’ tagline? These advertising gems and cues, launched by leading telecommunications company, Telstra, bring to mind their ‘Yellow Pages’ directory. But when used in relation to print or online directories, does the word YELLOW alone give rise to such an association? Or in trade mark parlance, is the word YELLOW inherently adapted to distinguish print or online directories?

Background

Telstra Corporation Limited’s wholly owned subsidiary, Sensis Pty Ltd, filed a trade mark application for the word mark YELLOW in 2003 for various goods and services, including print and online directories. It already owned the trade mark YELLOW PAGES, the well-known Australian services directory. During 2006, the company ran a series of advertising campaigns designed to promote the YELLOW trade mark as the main brand for its directories. However, it later shelved this approach due to low levels of consumer recognition. This did not diminish Telstra’s determination to pursue the trade mark application, which had initially been successfully opposed.

Late last year, in Telstra Corporation Limited v Phone Directories Australia Pty Ltd [2015] FCAFC 156 the Full Federal Court of Australia affirmed the primary judge’s decision to reject the application on the basis that the trade mark was not inherently adapted to distinguish print and online directories.

Two different appeals were consolidated in this case:

  1. Telstra’s appeal against the Federal Court decision to refuse registration of the word YELLOW which had been opposed by Yellowbook.com.au Pty Ltd and Phone Directories Company Australia Pty Ltd; and
  2. The appeal by Yellowbook.com.au Pty Ltd against the Federal Court’s decision to refuse registration of YELLOWBOOK and www.yellowbook.com.au due to the marks being deceptively similar to the trade mark YELLOW PAGES. This was ultimately unsuccessful.

This article will deal with the first appeal which required the court to determine:

  1. Was the word mark YELLOW inherently adapted to distinguish?
  2. Was the word mark YELLOW substantially identical with or deceptively similar to three other prior trade marks?

Is the word mark YELLOW inherently adapted to distinguish?

Section 41 of the Trade Marks Act 1995 (Cth) provides that an application for registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered from the goods and services of other persons.

At first instance, the primary judge found that the YELLOW trade mark was not inherently adapted to distinguish. Applying the wellestablished tests for determining the question, the primary judge found the word YELLOW was descriptive. He said it was not a made up or fanciful word nor was it an arbitrary term, as evidence showed that yellow was the colour commonly used in Australia for print and online directories. Further, he was satisfied that other traders both in Australia and overseas used the word and colour yellow in respect of their print and online directories.

Ultimately, as summarised by the Full Court, the primary judge found that:

‘ … other traders were likely, without improper motive, to want to use the word yellow to signify their goods in a way that will infringe the YELLOW trade mark because the word yellow is descriptive of the colour widely used in respect of directories and because it is likely that consumers recognise directories by reference to that colour.’

On appeal, Telstra submitted that:

‘Even if the primary judge found, and was correct to find, that the YELLOW mark signified print and online directories, he erred in finding the mark was descriptive of the goods.’

Telstra gave examples of words that were descriptive of directories. It argued that the YELLOW trade mark was not such a word and that the directories were not yellow or inherently yellow like, for example, bananas. 

In relation to that submission, the Full Court found it was correct for the primary judge to find that if the YELLOW mark signified print and online directories to consumers of these products, then the mark would be merely descriptive and not inherently adapted to distinguish in the same that the examples of descriptive words for other directories that Telstra had given were also merely descriptive. The Full Court referred to the principle that evidence of use of a word in a particular trade is relevant to the question of whether a mark is inherently adapted to distinguish. It considered that if the evidence established use of the colour yellow, with or without the word yellow, resulted in consumers and traders understanding the word yellow to signify print and online directories, then it could not be considered distinctive.

Telstra’s other main submission on appeal was that:

‘The primary judge had erred in proceeding on the basis that the YELLOW mark signified print and online directories in the absence of making a finding to that effect, or if he did make such a finding, it was erroneous having regard to the evidence.’

Telstra argued that if the YELLOW mark did not signify print and online directories then it was not wholly descriptive and was inherently adapted to distinguish, at least to some extent. It argued that there might be considerable use of the colour yellow in connection with print and online directories but that the primary judge did not analyse whether the colour was used to signify the directories as such, as distinct from decorative or eye-catching purposes.

In relation to this issue, the Full Court applied the approach adopted by the High Court of Australia in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 45. This involves a two stage inquiry:

  1. What is the ordinary signification of the word mark?
  2. Is it the case that other traders might legitimately need to use it in respect of their goods?

In assessing the ordinary signification of the word, the Court said:

‘The word yellow describes a colour and, even without evidence, it would be appropriate to infer that at least some other traders might wish to use that colour. Furthermore, there was at the very least evidence in this case of not infrequent use of the colour yellow in connection with print and online directories.’

The Court affirmed the primary judge’s decision that the word yellow signifies the colour yellow and that the word yellow describes the colour that is commonly used for print and online directories. Accordingly, it found that the mark was descriptive and not inherently adapted to distinguish print and online directories. 

It is worth noting that if the mark had been considered to have some inherent capacity to distinguish, rather than none at all, the Court would have found Telstra’s use and promotion of the mark sufficient to justify its acceptance.

Deceptively similar trade marks

The Full Court overturned the primary judge’s decision that the trade mark YELLOW was deceptively similar to the prior marks THE YELLOW ENVELOPE, YELLOW DUCK and YELLOW ZONE which were registered in relation to similar goods and services.

Among the primary judge’s reasons for finding the marks were deceptively similar was Telstra’s past commercial practice and representations Telstra had made before the Registrar of Trade Marks. However, the Full Court said Telstra’s history with regard to its YELLOW PAGES mark was not a relevant consideration. It upheld the original decision of the Registrar’s delegate that the marks were not deceptively similar due to the clear phonetic, visual and conceptual differences between the prior marks and the word YELLOW.

Onus of proof

The Full Court also considered whether the onus on an opponent to registration of a trade mark is on the balance of probabilities or an onus to establish that the trade mark should clearly not be registered. The Full Court confirmed that the standard of proof is on the balance of probabilities.

The Full Court’s decision was handed down in early November last year, however Telstra’s trade mark application remains alive. At the time of writing, it was unclear whether Telstra had sought special leave to appeal to the High Court.