The recent decision of Justice Murphy in the Federal Court to grant the appeals against registration by Telstra of the word “YELLOW” as a Trade Mark was significant in respect of the role which the colour yellow had in determining the fate of the word Mark denoting that colour.
Almost eleven years after the “YELLOW” word Trade Mark Application was filed, Justice Murphy held that the Registrar of Trade Marks was wrong in finding that the word “YELLOW” has some inherent capacity to distinguish Telstra’s Goods and Services. In fact, he ruled that it had none.
In reaching this decision, His Honour concluded that the colour and the name of the colour in this case were inextricable and that their inter-relationship was a critical factor in finding that the word Mark “YELLOW” was inherently non-distinctive.
This leads one to ask whether the desirability to other traders of the word “yellow” is due to the need to use the colour yellow? If the colour yellow is ubiquitous in this arena, does this really mean that the word is too? Should the word “yellow” really remain free for all to use in relation to business directory Goods and Services?
Justice Murphy thought so. At paragraphs 220-221 of his Judgment, he said:
“While I accept that the use of the colour yellow by other traders cannot be determinative in relation to the word yellow, in my view the use of the colour yellow and the word yellow cannot be separated as cleanly as Telstra contends. It must be remembered that registration of the word yellow as a trade mark will affect consumers and traders in household and commercial settings far removed from the refinement and nuanced expression of Senior Counsel in a courtroom. As the New Zealand Court of Appeal said in Cadbury v Effem at , it is difficult to divorce the use of a word denoting a colour from use of the colour itself.”
“Given the exclusive rights that would be granted to Telstra upon registration of the YELLOW Trade Mark there are likely to be serious difficulties for other traders in knowing where to draw the line in using trade marks that contain the word yellow or use the colour yellow.”
How then did Justice Murphy arrive at this conclusion? A colour and the name of that colour are not similar types of signs, nor are they interchangeable brand elements. On the basis of the evidence of use of both the colour and the word in the industry, His Honour ruled that the word “yellow” was:
- descriptive of a primary colour widely used in relation to the designated Goods and Services,
- was not arbitrary, meaningless or fanciful, given what the evidence showed
- therefore other traders would wish to use it without improper motive.
He then found that there is a competitive need for the colour yellow in the directory business, with the colour having a utilitarian and economic function, including that it stands out and contrasts well with black type. Thus:
“These utilitarian and economic functions in the colour yellow also point to a commercial imperative for other traders to use the word yellow.”
It would therefore seem that where a colour is common to the industry, the Courts feel that the word for the colour cannot be divorced from the colour itself, essentially because the colour is in widespread use and the word is descriptive of the colour.
Certainly, past use of the colour yellow by many together with accompanying use of the word “yellow” by some in the names of their competing businesses (such as “Yellow Directories” and “The Yellow Envelope”) helped the Judge arrive at this conclusion.
The Judge had a justifiable concern that Telstra would have used a registration for “YELLOW” to threaten every user or applicant of a directory Mark containing the word “yellow”, remembering that over the years Telstra had not always successfully enforced its rights in its existing family of “YELLOW” Marks against others.
Accordingly, Justice Murphy saw registration of the word Mark “YELLOW” as unfairly inhibiting honest competitors and therefore as highly undesirable, as did the New Zealand Court of Appeal in Cadbury v Effem in respect of the word Mark “PURPLE”.
In summary, Justice Murphy is saying that if certain traders want to use the colour yellow to colour their product, they may also wish to use the word “yellow” as part of their name or branding due to the connection between the two, and given what has happened in the past, that they should be allowed to do so.
According to the Federal Court, the colour-name convergence can work both ways and registration of the word can impact on use of the colour. The question here is, if the word Mark “YELLOW” was registered, would another trader still be able to use the colour yellow? Justice Murphy’s answer, echoing the concern of the New Zealand Court of Appeal in Cadbury v Effem, was that users of the colour in question may actually infringe the word Mark denoting that colour.
Take Home Message
Where does this leave us generally then with registration of word Marks comprising the name of a colour, such as PURPLE, RED, BROWN, ORANGE, LILAC, or even YELLOW for other Goods?
Justice Murphy has not closed the door on them. It is clear from the line of authority that if a colour is unusual or left of field in relation to the designated Goods or Services, its name is likely to be inherently distinctive and registrable. One hypothetical example would be “TERRACOTTA” for irrigation fittings.
However, if the colour is commonly used in the trade, then the name of that colour is unlikely to be inherently distinctive, because it describes that commonly-used colour and is more likely to be needed or wanted (if not already used) by other traders with proper motives.
Past use by others of the colour and the word is the key, and one suspects that if there had been no use of the word “yellow” by others prior to the filing of Telstra’s Trade Mark Application, Justice Murphy may have felt differently about its inherent distinctiveness, despite the nexus between colour and the name of that colour.