Emmanuel Khoury v Telstra Corporation Limited - [2010] ATMO 36

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Emmanuel Khoury to registration of trade mark application 963492 (9, 16, 35, 38, 41, 42) - YELLOW - filed in the name of Telstra Corporation Limited
-and-
Opposition by Telstra Corporation Limited to registration of trade mark application 1138225 (35) yellowbook.com.au filed in the name of yellowbook.com.au Pty Ltd

Delegate:

Michael Kirov

Representation:

Yellowbook.com.au Pty Ltd/Mr Khoury: Mr Emmanuel Khoury

Telstra Corporation Limited: Georgina Schoff of Counsel, instructed by Melissa Marcus of Mallesons, Stevens, Jacques

2010 ATMO 36

Decision:

Opposition 1: s52 opposition – sections 41 and 44 – trade mark YELLOW shown by evidence to be capable of distinguishing Telstra’s goods and services; s44 ground not established. Opposition not established.

Opposition 2: s52 opposition – sections 44 and 60 – trade marks YELLOW PAGES and yellowbook.com.au deceptively similar. Opposition established.

Background

This matter involves two “cross oppositions” under s 52 of the Trade Marks Act 1995 (“the Act”) concerning the trade marks YELLOW and yellowbook.com.au respectively. The earlier of the opposed applications is owned by Telstra Corporation Limited (“Telstra”) and is detailed below:

Application No: 963492

Priority Date: 25 July 2003

Services:Class 9: Computer software including computer programs; publications in electronic form including publications supplied on-line from databases or from facilities provided on the Internet (including web sites)
Class 16: Telephone books; telephone directories; and business directories
Class 35: Retail and wholesale services including retail and wholesale services in relation to directories, publications, printed matter, telecommunications equipment, computer hardware and software, recording discs and CD ROMs; marketing, merchandising, retail and wholesale distribution services (excluding transport); directory services; business advisory services; business planning and analysis services; business management and business administration services; business surveys, appraisals and research; collection, preparation, compilation, storage, processing, retrieval and provision of business information; conduct of business studies and preparation of business reports; economic forecasting and analysis for business purposes; market analysis, research and monitoring services for business purposes; advertising services; advertising survey services, including telephonic and electronic surveys; electronic commerce services; business information services; agency services in respect of such directories and business supplements; advertising services promoting the services and goods of advertisers in such directories and business supplements in any medium; co-operative advertising with those who advertise in telephone and telephone directory business supplements; domain name registration services; research provided to business relating to the telecommunications industry; on-line business information services relating to e-commerce.
Class 38: Telecommunication and communication services including telecommunication of information (including web pages), computer programs and any other data; directory services including provision of on-line directories; electronic mail services; provision of telecommunication access and links to computer databases and the Internet; transmission of information on a wide range of topics, including on-line transmission; arranging and providing electronic, digital and computerised communications services and facilities between wholesalers, retailers, customers, transport service providers; computer aided transmission of messages, data and images; on-line telecommunications information services relating to e-commerce
Class 41: Electronic publication of information on a wide range of topics, including on-line publication; publication in multiple mediums; education and training services relating to advertising; organising and staging sporting, cultural and entertainment events and competitions; publication of books, business directories and newsletters; arranging and conducting conferences and seminars
Class 42: Computer programming services; computer rental services; computer software design services; installation, maintenance and construction of computer software programs; research and development of technology, including research and development in relation to telecommunications goods and services, including directory goods and services in both electronic and non-electronic form; on-line computer services; provision of access to electronic databases including electronic directory databases; hosting of websites for others; designing of websites; drawing and commission writing for webpages; compilation of webpages and data for websites; consultancy in relation to all of the aforesaid services
(“the Telstra Goods and Services”)

Trade Mark: YELLOW
(“the Telstra trade mark”)

The Telstra trade mark was accepted for possible registration pursuant to section 41(5) of the Act following the filing of evidence of use and was advertised as such in the Australian Official Journal of Trade Marks of 10 January 2008.
Registration of the Telstra trade mark has been opposed (“opposition 1”) by Emmanuel Khoury (“Mr Khoury”), who is Managing Director of yellowbook.com.au Pty Ltd (“yellowbook”).
The second opposed application was filed by yellowbook and is detailed below:

Application No: 1138225

Priority Date: 1 October 2006

Services:Class 35: An online business directory listing advertising information such as contact details, companies name, address, addresses, telephone, phone, fax, contact, names, web, WWW, categories per states email directory services business to business, coupons to the public Australia wide[1]
(“the yellowbook Services”)

Trade Mark: yellowbook.com.au
(“the yellowbook trade mark”)
[1] I note the specification is somewhat poorly phrased, although this has not proved to be a relevant factor in my decision.

Following examination, the yellowbook trade mark was advertised for possible registration in the Australian Official Journal of Trade Marks of 13 December 2007 and is now opposed by Telstra (“opposition 2”).
The parties served and filed evidence in relation to each opposition as follows:

Opposition 1
Evidence in support – declaration by Emmanuel Khoury made 15 July 2009
Evidence in answer – declaration by Lisa Maria Mavrodis made 8 January 2009
Evidence in reply – declaration by Emmanuel Khoury made 15 May 2009
Further evidence in answer (from Telstra) – declaration by Kerryn Anne Underwood made 16 September 2009[2]
· Opposition 2
Evidence in support – declaration by Lisa Maria Mavrodis made 17 November 2008
Evidence in answer – declaration by Emmanuel Khoury made 20 March 2009
[2] With Mr Khoury’s consent I allowed Telstra to rely on this late declaration, because it purported to address fresh matters raised in Mr Khoury’s evidence in reply.

I heard both oppositions as delegate of the Registrar of Trade Marks at a hearing in Melbourne on 18 September 2009. Georgina Schoff of Counsel, instructed by Melissa Marcus of Mallesons, Stevens, Jacques, represented Telstra. Mr Khoury represented himself in relation to opposition 1 and represented yellowbook in relation to opposition 2.
Although his original Notice of Opposition only nominated a single ground (under s 41), with Telstra’s consent at the hearing I granted leave to Mr Khoury also to press a s 44 ground. He accordingly pursued grounds under ss 41 and 44 in relation to opposition 1.
Telstra pursued grounds under ss 43, 44 and 60 in relation to opposition 2. However, for reasons which will become clear I have not found it necessary to discuss the s 43 ground.
As regards onus, I confirm that I am proceeding on the basis that the opponents need only establish one or both of their grounds of opposition on the balance of probabilities[3].
[3] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [27].

History and evidence

It is convenient for the sake of brevity and clarity to firstly discuss the history of Telstra’s pre-existing registrations for the mark YELLOW PAGES, in particular that of registrations 545667 (16), 545668 (35), 545669 (38) and 704079 (9, 42), as indicated by the evidence before me. I note that the coverage of these four registrations essentially parallels that of the currently opposed application for the Telstra trade mark.
At the time the first three applications for the above registrations were filed on 12 November 1990 Telstra (or its predecessors[4]) had long had a monopoly in telephonic communications in Australia. This monopoly ended in the early 1990s. Up until that time Telstra was the only person[5] with the information and resources to produce telephone directories (whether in printed or electronic form and including the provision of advertising services associated with those telephone directories) in Australia (hereafter, for the sake of brevity, “Directories”). The evidence before me is that Telstra (or its licensees) produced and supplied Directories in Australia by reference to the words “Yellow Pages” from 1975 until at least 2006. There is no evidence before me that any party unrelated to Telstra did so.
[4] Hereafter in this decision a reference to past activity by “Telstra” includes past activity by Telstra’s predecessors in title.
[5] As defined in s 6 of the Act, that is including “a body of persons, whether incorporated or not”.
By way of contrast, in other countries around the world, such as in the United States, it appears several businesses concurrently published telephone directories (and presumably provided associated advertising services) by reference to the words “Yellow Pages” and may indeed have done so for many years prior to 1975. Thus these words may be regarded outside Australia as being generic for relevant goods and/or services. In Australia, however, the words “Yellow Pages” were by November 1990 (through extensive use over 15 years) only associated with the goods and services of Telstra. The words “Yellow Pages” were thus functioning in Australia as “a sign used to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”[6]. Indeed, by November 1990 the words “Yellow Pages” were considered to have become distinctive in Australia of Telstra’s relevant goods and services in Classes 16, 35 and 38. Accordingly the words could be (and were) registered as a trade mark which had become distinctive of these goods and services, (or in the case of the goods and services in Classes 9 and 42 covered by registration 704079, which dates from 1996, “capable of distinguishing” those goods and services)[7].
[6] See section 17 of the Act.
[7] Registrations 545667, 545668 and 545669 were accepted for registration pursuant to s 24(2) of the Trade Marks Act 1955 as “distinctive” of the goods and services in Classes 16, 35 and 38 they covered, whilst registration 704079 was considered “capable of distinguishing” the goods and services it covered in Classes 9 and 42 pursuant to s 41(5) of the (1995) Act.
Thus, the words “Yellow Pages” constitute a distinctive trade mark within Australia in relation to (at least) Directories and whether or not they are considered generic elsewhere in the world does not alter that fact. I mention that not only does the evidence establish that the YELLOW PAGES trade mark had become distinctive in Australia of Telstra’s Directories by 1990, the evidence further indicates that Telstra continued to use the mark beyond 1990 in relation to Directories until at least 2006. In this regard Ms Mavrodis’ evidence is that in the 2006 financial year the income generated by Telstra’s Directories under the YELLOW PAGES trade mark was in excess of one billion dollars.
Ms Mavrodis’ further evidence is that:
[I]n September 2006, the Yellow Pages suite of directory products was relaunched under a new name, Yellow. […] This change reflects the fact that these products are now available through various electronic media as well as in the traditional print form.
Ms Mavrodis goes on to say that
The printed Yellow directory continues to be published annually in defined localities, and is distributed free of charge to almost every home and business in Australia. The online Yellow directory is accessed on average by 2.5 million consumers per month. The purpose of the directory (whether in hard copy or online format) is to provide a comprehensive list of businesses (grouped according to the needs of the community) together with advertising information for those businesses, which constitutes a valuable, effective and easy to use buying guide for both domestic and business users.
Referring to the number of annual publications under the Telstra trade mark, Ms Mavrodis states:
In 2007/2008, Sensis[8] published 87 Yellow directories. These directories can be divided into three types:
(a) Metropolitan directories, which are produced for major capital cities such Sydney, Melbourne, Brisbane, Adelaide, Perth and Hobart.
(b) Regional directories, which are produced for regional areas outside of those cities with metropolitan directories. Document 8 is a map showing the regions in which Yellow directories are published.
(c) Local directories, which are produced for suburban areas in major capital cities. In 2007/2008, Sensis published 31 local directories covering areas in Sydney, Melbourne, Brisbane, Adelaide and Perth.
[8] “Sensis” is the entity now licensed by Telstra to use the Telstra trade mark.
For its part, Mr Khoury’s evidence is that yellowbook started using the yellowbook trade mark in 2006 in relation to an on-line directory accessible through the Internet websites <yellowbook.com.au> and <yellowbook.net.au>.
Mr Khoury’s evidence otherwise contains, in addition to some further factual information and various exhibits and annexures, a number of submissions. The further matters raised by Mr Khoury in his three declarations are redacted (or directly quoted, as the case may be) below:
·     “YELLOW is a descriptive word which is clearly required for use by other traders. Telstra may argue that YELLOW is its distinctive element; however, this element being a highly generic term is plainly not distinctive taken on its own. This being a generic term, a colour that is one of the primary colours of the rainbow and YELLOW being a colour synonymous with advertising/directories, is not able to distinguish one traders goods and/or services from those of other traders.” (sic)
·     “A single colour word, that being YELLOW is also applied with that colour on the surface of goods that are normally coloured YELLOW generally will be regarded as not being able to distinguish goods and services in the market place.” (sic)
·     “Furthermore, the word and colour YELLOW is descriptive in the sense that it is used generically worldwide to portray its services as being a business directory and/or advertising related products and services.” (sic)
·     He mentions five Australian trade mark registrations in Class 35 (and in two cases also covering related Classes) owned by third parties for marks which include the word “yellow” and concludes:
“By granting a monopoly of the word YELLOW to Telstra, it will no longer accept future traders intending to use the word YELLOW in its own marketing strategies as registered marks. Furthermore, YELLOW is a mark that is not able to distinguish its goods and services and most importantly, the prefix YELLOW is already used by other traders in class 35 in conjunction with another word”. (sic)
·     He in particular refers to registrations 1002753 (35) and 851576 (35), both of which contain or consist of the words YELLOW DUCK and argues that these are a precedent for the registration of the yellowbook trade mark. He exhibits the decision of a delegate of the Registrar of Trade Marks in relation to these trade marks[9] along with a declaration by the applicant in that case, Robert George Coles, wherein Mr Coles says he does not “[S]ee any degree of public confusion between [the] trade mark yellowbook.com.au and [his] trade marks YELLOW DUCK”.
[9] Telstra Corporation Limited v Robert George Coles [2004] ATMO 16
·     Mr Khoury exhibits an examiner’s report on Telstra’s application 726418 for registration of the trade mark YELLOW in which the examiner objected that the word “yellow” was not prima facie capable of distinguishing Telstra’s goods or services. This application lapsed on 23 May 2002. He also exhibits an examiner’s report in similar terms issued by the Intellectual Property Office of New Zealand in relation to a corresponding application for the trade mark YELLOW in that country.
·     He exhibits details of Telstra’s Australian trade mark registration 327524 YELLOW PAGES & Device, (which covers “Advertising” in Class 35 and dates from 1979), in which Telstra consented to the examiner’s request for a disclaimer[10] of the words “yellow pages”, and contends that this indicates Telstra could not then show exclusive use of the words for “advertising” services).
·     He annexes a decision in 2006 by the World Intellectual Property Organisation (“WIPO”) Arbitration and Mediation Centre in Telstra Corporation Limited v Mandino Pty Ltd[11], wherein Telstra attempted unsuccessfully to have the domain name registrations for <yellowbook.com.au> and <yellowbook.net.au> cancelled, and he comments:
“Fortunately, the panellist found that YELLOW BOOK is not confusingly similar to YELLOW PAGES and since then, we have grown substantially.
“Once the WIPO decision was released, Telstra did not file an application for appeal in the Federal Court of Australia, therefore, not challenging the WIPO decision. The WIPO decision allowed YELLOW BOOK to operate under its current domain name, hence using the trade mark YELLOW BOOK in day-to-day business activities.” (sic)
·     He exhibits a confidential analysis of visits to the website <yellowbook.com.au> for the period 1 April 2006 to 1 February 2009. (I observe in passing that this period is some 1037 days long and that the daily rate of visitors to the website appears to be low or at best moderate for a directory service.)
·     He exhibits a declaration by Catherine Rose McGarry, who is General Manager of an Australian company called Phone Directories Company Pty Ltd[12]. Put briefly, Ms McGarry states her belief that the colour yellow is commonly used in Australia for Directories and she gives examples of people other than Telstra who she says have used the word “yellow” or the colour yellow in relation to relevant services.

Submissions

[10] Pursuant to s 32 of the Trade Marks Act 1955.

[11] Case No. DAU2006-0006. Mr Khoury indicated in his oral submissions that he was a Director of Mandino Pty Ltd.

[12] This company has also opposed Telstra’s application 963492 for the Telstra trade mark, with that opposition yet to be heard.

Opposition 1

In his oral submissions in relation to opposition 1, Mr Khoury argued:
·     That the word “yellow” is not distinctive on its own since other traders need to use the word and it is descriptive of a colour.
·     That Telstra did not coin the term YELLOW PAGES and was not the first to print its telephone directories on yellow paper. Further, the term YELLOW PAGES was generic elsewhere in the world, particularly in the United States, in relation to Directories.
· That I should bear in mind as relevant considerations Sections 41(2) and (3) of the Act, the criterion for distinctiveness discussed in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (“Clark Equipment”) and the examiner’s report in relation to Telstra’s application 726418 YELLOW (in which the examiner objected that the word “yellow” lacked capacity to distinguish some of Telstra’s then goods or services of interest).
·     That the Telstra trade mark was not inherently adapted to distinguish the Telstra Goods and Services because of its descriptive use in Australia and internationally in relation to Directories. Here he drew my attention to a Google® search result (from <google.com>) in evidence which he said showed wide international use of the word “yellow” in relation to Directories. Therefore, Mr Khoury submitted, the word “yellow” lacked any inherent capacity to distinguish the Telstra Goods and Services as it indicated the kind of goods and services offered under the trade mark.
·     That there were inconsistencies, in evidence, in Telstra’s use of the trade marks YELLOW and YELLOW PAGES, with some more recent (that is, post-2006) of Telstra’s printed telephone directories still featuring the YELLOW PAGES trade mark rather than YELLOW solus.
· In relation to his section 44 ground, that the YELLOW trade mark was deceptively similar to the following registered trade marks:
828126 (9, 16, 35, 41, 42) YELLOW BUS & Chinese Characters & Device
851034 (35) THE YELLOW ENVELOPE
851576 (35) YELLOW DUCK
984570 (35) YELLOWMANGO ADVERTISING & Device
1002753 (25, 28, 35) YELLOW DUCK & Device
·     That the above trade marks and the Telstra trade mark all contained the “highly descriptive” word “yellow” and that as a result the Telstra trade mark “has no essential feature” and should be denied registration.

In response, Ms Schoff submitted:
·     That the opposition appeared to be founded on the conceptual argument that the word “yellow” was descriptive of each of the goods and services for which Telstra was seeking to register the YELLOW mark, but that there was no evidence of this. She tendered copies of the entries for the word “yellow” in the Shorter Oxford English Dictionary and the Macquarie Dictionary, which indicated the word was only descriptive of a colour and not of any of the Telstra Goods and Services. She noted that the term YELLOW PAGES was acknowledged in both dictionaries as, respectively, a proprietary term or a trade mark.
·     That the usages in the United States and elsewhere apparently shown by the <google.com> search relied upon by Mr Khoury were irrelevant since they occurred in foreign markets.
·     That virtually all of the usages of the word “yellow” within Australia referred to within Mr Khoury’s evidence have ceased as a result of action by Telstra and/or Sensis. The exception, in relation to Directories, was YELLOW DUCK and that contained, in addition to the word “yellow”, another, and inherently distinctive, element.
·     That YELLOW has been used by Telstra as a trade mark since the rebranding of YELLOW PAGES in September 2006 – with some use also in Telstra’s “Hello Yellow” advertising campaign in the 1990s and in its 2005 “Find it in Yellow” advertising campaign, both detailed in Telstra’s evidence.
·     That the evidence showed that the trade mark YELLOW was capable of becoming distinctive.
·     That the trade mark YELLOW was not, according to the usual tests, deceptively similar to the trade marks relied upon by Mr Khoury in his submissions.

Opposition 2

In relation to opposition 2, Ms Schoff indicated that in pursuing its ground under s 44 Telstra was relying on its earlier registrations for the mark YELLOW PAGES (particularly registration 545668 in Class 35) and on application 963492 YELLOW. As for its s 60 ground, Telstra was relying on its use of marks containing or consisting of the words “yellow pages” or “yellow” (hereafter, collectively, “Telstra’s YELLOW Trade Marks”). She submitted:
· That as regards the s 60 ground there was extensive evidence of use of Telstra’s YELLOW Trade Marks and that notice could be taken by the Registrar of the notoriety of the YELLOW PAGES trade mark in the same way that French J took notice of the notoriety of the WOOLWORTHS trade mark in Registrar of Trade Marks v WoolworthsLtd (1999) 45 IPR 411.
· That as regards the s 44 ground there was no issue with Mr Khoury that the services covered by opposed application 1138225 were “similar services”[13] to those covered by, in particular, Telstra’s registration 545668 (35) YELLOW PAGES and the Class 35 specification of application 963492 YELLOW[14].
· That as far as both these grounds are concerned the only issue was thus whether the yellowbook trade mark was at least “deceptively similar” to Telstra’s YELLOW PAGES or YELLOW trade marks.

·     That the usual tests that are applied in deciding whether trade marks are deceptively similar (which she discussed) indicated such a finding should be made in this case.
·     That only the distinguishing element(s) of a trade mark consisting of a domain name should be considered when it is assessed for deceptive similarity. Accordingly, the “.com.au” portion of the trade mark yellowbook.com.au should be ignored.
·     That the words “book” and “pages” were to some extent descriptive of Directories and should therefore be given less weight when assessing the parties’ marks. Moreover, to the extent they were given any weight the words “book” and “pages” were associated ideas.
·     That the element YELLOW, being the first (or sole) part of the parties’ trade marks, should be foremost in comparing the marks.
·     That the principles relied upon by the High Court of New Zealand in comparing the YELLOW PAGES trade Mark with the mark yellowbook.co.nz in the case YPG IP Limited v yellowbook.com.au Pty Ltd[15] (“the NZ yellowbook case”), a copy of which decision was included in Telstra’s evidence, should be applied with the same effect here.
[13] As defined in s 14(2) of the Act.
[14] This was in fact expressly confirmed by Mr Khoury at the hearing. Nor, I would add, was there any dispute that the registered or pending trade marks on which Telstra relies have earlier priority dates than application 1138225.
[15] HC AK CIV 2007-404-2839 (28 November 2007). YPG IP Limited is the owner of the New Zealand YELLOW PAGES copyright and trade mark.

I mention that although the NZ yellowbook case has no bearing on my decisions in the present oppositions it does provide relevant background. The case concerned applications by companies related to Telstra for interlocutory injunctions based on both copyright and trade mark issues, in particular alleged infringement of copyright by both yellowbook and Robert George Coles[16] and alleged infringement of NZ registrations for the YELLOW PAGES trade mark by use of the trade mark yellowbook.co.nz. Mr Coles provided a business directory in New Zealand via the Internet (under the trade mark YELLOW DUCK) using headings and listings provided by yellowbook which were alleged to have been copied from the New Zealand YELLOW PAGES data base. Although not of direct consequence to the present oppositions, I note that Allan J observed at paragraph 93 in relation to the copyright issue:
I accept the plaintiffs’ submission that they have established that a substantial part of the second plaintiff’s copyright works has been copied, and that there is a sufficient objective similarity between the copyright works and the YELLOW BOOK and YELLOW DUCK directories to give rise to an inference of copying.
[16] Mr Coles is the owner of Australian trade mark registrations 851576 (35) YELLOW DUCK and 1002753 (25, 28, 35) YELLOW DUCK & Device and, as mentioned in paragraph 18 above, Mr Khoury and yellowbook rely on a declaration by Mr Coles in connection with the present (Australian) oppositions.
While, again, not of direct consequence to my decision in the current oppositions, Ms Schoff highlighted that with the trade mark infringement issue Allan J, in granting the requested interlocutory relief, considered there was a serious question to be tried as to whether the yellowbook.co.nz mark was “similar”[17] to the registered YELLOW PAGES mark and whether its use “would be likely to deceive or confuse”[18] in light of the relevant YELLOW PAGES registrations[19].
[17] See s 89(1)(c) of the (NZ) Trade Marks Act 2002.
[18] Ibid.
[19] That is, independently of any reputation the YELLOW PAGES mark may have acquired in NZ through use.
Mr Khoury, in response to Ms Schoff’s submissions, drew my attention to:
·     The presence of a disclaimer of right to exclusive use of the words “yellow pages” on Telstra’s registrations 304264 (16) and 327524 (35), which date from 1977 and 1979 respectively, for the mark:
·     The fact that yellowbook had abandoned two of its earlier Australian trade mark applications and was now seeking to register only the yellowbook trade mark which was, he said, more in line with the WIPO decision[20].
·     The content of the WIPO decision which, Mr Khoury said, supported his position. Mr Khoury reiterated his belief that Telstra had the opportunity to appeal the WIPO decision in the Federal Court of Australia but opted not do so.
·     His earlier submissions that the word “yellow” was commonly used in the advertising or directories industry and that other people have used the word in relation to their similar services.
·     The survey evidence of Telstra which Mr Khoury argued supported his position.
·     The pattern of use of Telstra’s YELLOW Trade Marks in the past as shown by the evidence, which suggested that its relevant goods and services were known amongst the public by reference to only the YELLOW PAGES and/or the “walking fingers” device (shown above) marks.
·     The well established rule that a trade mark should be considered as a whole.
·     The visual differences between the trade marks and the differences between the number of syllables in the trade marks.
·     The decision of the High Court in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536 wherein the trade marks RAINMASTER and RAIN KING were held not to be deceptively similar in connection with irrigation equipment in Class 7.

Discussion

[20] That is, the WIPO decision mentioned in paragraph 19 above.

Opposition 1

Section 41

Section 41 of the Act provides:
41Trade mark not distinguishing applicant’s goods or services
(1)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1:For applicant and predecessor in title see section 6.
Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2)An application for the 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 (designated goods or services) from the goods or services of other persons.
Note:For goods of a person and services of a person see section 6.
(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a)the Registrar is to consider whether, because of the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.
Note 1:For goods of a person and services of a person see section 6.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
It is convenient to address the submissions of the parties first.
Mr Khoury in his submissions looks to overseas examples of the use of the term YELLOW PAGES to support his thesis that the Telstra trade mark lacks any inherent adaptation to distinguish the Telstra Goods and Services. This proposal is flawed for the following reasons:
·     The Telstra trade mark is not YELLOW PAGES, but rather consists of the element YELLOW, solus.
·     The Australian telephone directories market was historically distinct from the rest of the world for the reasons discussed at paragraphs 12 to 14 of this decision. As mentioned, Telstra’s early Australian registrations of the trade mark YELLOW PAGES indicate the mark was considered distinctive in Australia of relevant goods and services in Classes 16, 35 and 42 in 1990. Further, it was considered (at least) capable of distinguishing relevant goods and services in Classes 9 and 38 in 1996, at which time public use of the Internet was of course in its infancy.
·     While notice may be taken of overseas usages when an examiner objects to the prima facie capacity of a trade mark to distinguish particular goods or services, the mark may still be registrable in Australia if it can be shown, through use or other circumstances, that it is in fact capable of distinguishing (or has become distinctive, as the case may be) in Australia of those goods or services.
·     To the extent the term YELLOW PAGES is relevant to the opposition, it is as a registered trade mark in Australia of Telstra.
Mr Khoury also regards the WIPO decision and the lack of appeal against it by Telstra to the Federal Court as supporting his position. This approach is not well founded because:
·     There is no avenue of appeal from the WIPO decision to the Federal Court of Australia. Indeed, the panellist’s decision is final and there is no avenue of appeal at all.
·     The WIPO panellist was unable to consider Telstra’s application 963492 for YELLOW solus because he was bound to only consider trade mark registrations. Thus he was only able to consider Telstra’s registered YELLOW PAGES trade mark.
·     To the extent that the WIPO panellist relied on the decision in de Cordova v Vick Chemical Co (1951) 69 RPC 103 it was, submitted Mr Khoury, apparently because the panellist did not believe the element YELLOW solus was “an essential feature” of Telstra’s YELLOW PAGES trade mark. I do not agree with the panellist’s apparent view in that regard. However that is not a matter which bears upon the issue I am called upon to decide in this opposition in any event. Rather, the issue I must consider is whether I am satisfied that the trade mark YELLOW solus is now “capable of distinguishing” the Telstra Goods and Services in Australia given, inter alia, its use in this country.
·     To the extent that the panellist considered it significant that, as Mr Khoury put it in his written submissions, “Telstra did not provide evidence that the word YELLOW had acquired distinctiveness”, I point out that Telstra is not required to establish “acquired distinctiveness” in order for the YELLOW trade mark to be registrable in Australia. Rather, Telstra need only show the YELLOW trade mark is “capable of distinguishing” the Telstra Goods and Services, that is that it does, or will at some future time, distinguish those goods and services.
·     The WIPO panellist, in comparing the trade mark YELLOW PAGES with the “yellowbook” portion of the domain names <yellowbook.com.au> and <yellowbook.net.au>, placed much weight on his view that the word “yellow” was “highly generic”. The panellist does not explain or nominate the goods or services in relation to which the word “yellow” might be generic, nor indeed what he understands by his use of the word “generic”. I do not in fact agree that the word “yellow” (as distinct from the colour “yellow”) is a generic term for any of the Telstra Goods and Services for reasons I will explain below.
·     The WIPO decision was made in 2006 and the panellist was without the benefit of the 2007 decision in the NZ yellowbook case which could have considerably strengthened Telstra’s “bad faith” arguments[21].
[21] To succeed before the WIPO tribunal in question a complainant needs to establish bad faith on the part of the domain name owner.
Mr Khoury has pointed to other traders who have apparently printed their business directories on yellow paper, or featured the colour yellow on their websites, or who have the word “yellow” within their composite trade marks, to attempt to establish that the word “yellow” is common to the trade. In some of these cases, however, Telstra (or Sensis) has taken steps to stop these other uses; in others there is extra matter within the trade marks which is distinctive and which serves to distinguish the mark as a whole from Telstra’s YELLOW Trade Marks. In the circumstances of this opposition, the fact that other traders might print (or have printed) their directories on yellow paper (there are no such directories in evidence), or operate websites featuring the colour yellow, does not directly bear on the question of the inherent adaptation of the word trade mark YELLOW to distinguish the Telstra Goods and Services.
Mr Khoury also made submissions based on the initial objections in examiners’ reports (which reported adversely on the capacity of trade marks within Telstra applications to distinguish particular goods or services) and made further submissions based on “disclaimers” that Telstra had historically agreed to in order to secure registration. In regard to these submissions:
· An examiner’s adverse report on an application is, inter alia, based upon a prima facie assessment of the apparent qualities of the trade mark in terms of section 41 of the Act (or, historically, sections 24 and 25 of the Trade Marks Act 1955)[22]. It is anticipated that an applicant will seek to address concerns raised by the examiner in order to place the application in good order for acceptance, which might relevantly include placing evidence before the examiner of acquired distinctiveness, or of capacity of the trade mark to distinguish, relevant goods or services. As discussed above, this was the approach adopted by Telstra in relation to its registered trade mark YELLOW PAGES and was also the case with the YELLOW mark subject of the present opposition. Therefore, the mere existence of adverse reports at the examination stage does not mean an eventual registration for the mark in question is of lesser value than a registration for a mark which was considered prima facie registrable upon initial examination.
· Although Telstra might have historically disclaimed right to exclusive use of the words “yellow pages”, this does not affect Telstra’s rights in its registered YELLOW PAGES trade marks in which the words are not disclaimed.
[22] In the case of Australia. The position is essentially identical in the case of New Zealand.
As I observed at the hearing, I do not concur with Mr Khoury’s submission that, in effect, words which are the names of colours lack any capacity to distinguish (whatever the goods or services may be) and thus cannot be registered as trade marks. Many trade marks which are the names of colours have been found to be inherently distinctive, or “capable of becoming distinctive”[23], or “capable of distinguishing”[24], or have become distinctive, as the case may be, of particular goods or services. Examples of the names of colours which are or have been registered as trade marks include 390900 (17) PINK for insulating batts, 300617 (28) LIGHT BLUE for sporting equipment, 791442 (3) DARK BLUE for toiletries and hair care preparations, 628777 (9) ORANGE for telecommunications apparatus and related equipment and software and 906412 (36) VIOLET for financial services.
[23] Being the words used in s 25(1) of the Trade Marks Act 1955.
[24] Being the words used in ss 41(2), (3) and (5) of the (1995) Act.

Conversely, I do not agree with Ms Schoff that the trade mark YELLOW has no descriptive qualities in relation to many of the goods in Classes 9 and 16 covered by the opposed application. The names of colours are commonly needed by traders to describe the appearance of goods. Indeed, the names of some colours might also be needed by many traders in relation to their services – “green” is one such word which is commonly used in relation to environmental services.
Turning to s 41 of the Act itself, its scheme of operation (and its relationship with s 33 of the Act) was summarised by the Registrar’s delegate in Australian Rugby Union Limited [2000] ATMO 111:
The meaning of [s 33(1)], and its interaction with the provisions of s 41, have been judicially considered in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 at 503. In that decision, Branson J said:
Section 33(1) provides that the Registrar must accept the application unless satisfied that the application has not been made in accordance with the Act, or that there are grounds for rejecting it. The 1955 Act, by s 44, required the Registrar to accept the application only if satisfied that there was no lawful ground of objection to it. The terms of s 33(1) of the Act are presumably intended to reflect the recommendation of the Working Party that the Act "should be expressed in terms which make it clear that there is to be a presumption of registrability when examining an application for registration" (p 42 of the Report). However, by reason of the terms of s 41 of the Act, it is doubtful that s 33(1) can have any practical effect so far as the specific question of capacity to distinguish is concerned.
Each of s 33(1) and s 41 involves the concept of the Registrar being "satisfied". Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.
Her Honour then proceeded to analyse the process by which the Registrar is to reach a conclusion as to whether or not a trade mark is capable of distinguishing. The key issue in this process is "the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons." Having considered this, the Registrar can reach one of three possible conclusions, each of which entails its own specific consequences. These conclusions, and their consequences, are:
1. That the trade mark has sufficient inherent adaptation to distinguish to be capable of distinguishing. No ground for rejection under s 41 then exists and s 33(1) binds the Registrar to accept the trade mark.
2. That the trade mark has no inherent adaptation to distinguish. The onus is then on the applicant to demonstrate to the Registrar's satisfaction that the trade mark nevertheless does distinguish the designated goods or services by reason of use. If this is demonstrated, the Registrar must find that the trade mark is capable of distinguishing in terms of s 41(6). If so, s 33(1) binds the Registrar to accept the trade mark. An applicant's failure to demonstrate this means that the Registrar must reject the application in terms of s 41(2) and s 33(3).
3. That the trade mark has some inherent adaptation to distinguish, but insufficient to be capable of distinguishing on that basis alone. The onus is then on the applicant to demonstrate to the Registrar's satisfaction that, by the combination of the extent to which it is inherently adapted to distinguish, and/or the use or intended use of the trade mark by the applicant, and/or any other circumstances, the trade mark does or will distinguish the designated goods or services in terms of s 41(5). If so, s 33(1) binds the Registrar to accept the trade mark. An applicant's failure to demonstrate this means that the Registrar must reject the application in terms of s 41(2) and of s 33(3).
The starting point in considering the ground under s 41 in relation to the Telstra trade mark is s 41(3) and consideration of the extent to which the trade mark is inherently adapted to distinguish the Telstra Goods and Services from the similar goods or services of other persons.
In Clark Equipment, referred to in Mr Khoury’s submissions[25], Kitto J said of inherent adaptation to distinguish (at 514):
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
[25] See paragraph 20.
The relevant definition of the word “yellow” found in the Macquarie Dictionary is:
yellow
adjective 1. of a bright colour like that of butter, lemons, etc.; between green and orange in the spectrum.
There is no other definition of the word “yellow” within the Macquarie Dictionary applicable to any of the Telstra Goods and Services. There is no other evidence before me that the word “yellow” solus is a generic term in Australia for any of the Telstra Goods and Services. Mr Khoury’s submissions that the word “yellow” solus is generic thus appears, on the evidence before me, without any foundation.
That said, the word “yellow”, being an adjective with the above defined meaning, may describe, or may be used to describe, the physical appearance of goods, such as the “Telephone books; telephone directories; and business directories” which are amongst the nominated goods covered by Telstra’s application. However, the fact that a word may be used to describe the physical appearance of goods does not make that word generic. Examples of generic words used in relation to Directories are words such as the word “directory” itself, or “directories”, or “business listings”, or “service directory”, and so on.
I am not however persuaded by the evidence that the word “yellow” is needed in the ordinary course of trade, and without improper motive, by other traders to describe their similar services. It is difficult to see how Telstra’s services of interest could be characterised as, or described as, “yellow services”. Insofar as it relates to the services covered by Telstra’s application, therefore, the s 41 ground of opposition is not established.
As mentioned, I consider that the word “yellow” may have a descriptive quality in relation to some[26] of the goods covered by Telstra’s application and for this reason may be needed by other traders in similar goods for legitimate descriptive purposes. However, not all “Telephone books; telephone directories; and business directories” have yellow covers and there is on the face of it no need for traders to put yellow covers on their similar goods. Despite the submissions of Mr Khoury to the contrary, there is no evidence before me that yellow covers are a customary trade dress in the field in Australia. It is quite possible that the few instances that Mr Khoury has cited, but not brought into evidence, are sparked by his knowledge of Telstra’s products, or are imitative of Telstra’s products. I have no opinion either way as these other alleged directories are not before me.
[26] It would not on the face of it be apt for normal description of “computer software including computer programs” generally, as covered by the Class 9 specification of Telstra’s application.
As a conclusion, and in the words of s 41(5) of the Act, I consider that the Telstra trade mark is to some extent inherently adapted to distinguish Telstra’s relevant goods from the similar goods of other persons but I am unable to decide, on that basis alone, that the trade mark is capable of distinguishing the goods in question.
That is to say, I do not agree with Mr Khoury’s submission that the word “yellow” falls into the same categories of trade marks as those referred to in the notes to subsection 41(6) of the Act – those lacking any inherent adaptation to distinguish goods – namely those “ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods … or the time of production of goods”.
The evidence shows that Telstra has used the trade mark YELLOW in relation to its goods to a significant extent since at least 2006[27]. Telstra has expended considerable money on promoting its goods and has gained substantial revenue under the YELLOW trade mark which is indicative of public recognition of the word as a trade mark of Telstra. As Mr Khoury states, this use has not always been consistent. However, I am nevertheless satisfied that the use Telstra has demonstrated in its evidence is sufficient to establish that the YELLOW trade mark does or will distinguish the designated goods and that, accordingly, the trade mark should be taken to be capable of distinguishing Telstra’s goods from the goods of other persons.
[27] To qualify for registration under s 41(5) it is not necessary that the use relied upon by an applicant pre-date the filing of the application.
The Telstra trade mark is thus registrable under the provision of subsection 41(5) under which it was accepted by the examiner.
Consequently, Mr Khoury has not established his ground under section 41 of the Act.

Section 44

Section 44 of the Act relevantly provides:
44Identical etc. trade marks
(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar goods or closely related services; or
(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1:For deceptively similar see section 10.
Note 2:For similar goods see subsection 14(1).
Note 3:For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2:For similar services see subsection 14(2).
To establish this ground of opposition an opponent needs to establish all of the following:

The registered or pending trade marks which are relied upon have priority dates which are earlier than that of the opposed trade mark;
The goods and services in respect of which the opposed trade mark is sought to be registered are “similar” or “closely related”, as the case may be, to those nominated under one or more of the earlier trade mark applications or registrations; and
The opposed trade mark is at least “deceptively similar” to one or more of the relevant trade marks relied upon.

As mentioned earlier, Mr Khoury relies on the following registrations:
828126 (9, 16, 35, 41, 42) YELLOW BUS & Chinese Characters & Device
851034 (35) THE YELLOW ENVELOPE
851576 (35) YELLOW DUCK
984570 (35) YELLOWMANGO ADVERTISING & Device
1002753 (25, 28, 35) YELLOW DUCK & Device
Since registrations 984570 (35) YELLOWMANGO ADVERTISING & Device and 1002753 (25, 28, 35) YELLOW DUCK & Device have later priority dates than the 25 July 2003 priority date of Telstra’s opposed application they fail the first test set out in paragraph 48 above and need not be considered further.
Relevant details of the remaining three registrations are set out below (with my bold emphasis added to the various specifications where relevant):

Regn No: 828126[28]

[28] I note this registration expired when it was not renewed when due by 16 March 2010, although it may be restored to the Register and renewed provided this is done within 6 months of its expiry.

Priority Date: 16 March 2000

Goods and Services: Class 9: Apparatus and instruments for recording, receiving, transmitting and/or reproducing data, information, pictures, images, and/or sound; apparatus and instruments for displaying and/or printing out data, information, pictures and/or images; magnetic data carriers; recording discs; compact discs; video compact discs, optical discs; computer programs; computer software supplied on the Internet; providing on-line electronic publications (downloadable) from the Internet; interactive telecommunication apparatus and instruments for the transmission and reception of data, information, pictures, video, images and/or sound and/or for the offer and ordering of goods and/or services; apparatus, instruments and software for communicating with computer networks (e.g. the world wide web); television, radio, video and audio apparatus, equipment and devices; optical goods; and parts and fittings for all the aforesaid goods; all excluding telephone and facsimile directories, provided to users in printed form or via electronic media; all included in Class 9

Class 16: Circulars, magazines, books, diaries, leaflets and printed matter all excluding telephone and facsimile directories, provided to users in printed form or via electronic media, stationery; playing cards; paper and cardboard and goods made from these materials; photographs; material for packaging; all included in Class 16

Class 35: Publication of publicity materials; advertising and promotion services and information services thereto; business information services; dissemination of advertising material, updating of advertising material, compilation of advertisements for use as web pages on the Internet; rental of advertising space; promotion of goods and services, data capture, compilation of information into computer data bases; sales, business, advertising and promotional information provided by computers to unavailable subscribers; provision of sales, business, advertising and promotional information through a global computer network; provision of computer databases relating to business; auction via a global computer network; retail and wholesale of goods; provision of on-line directories; consultancy, information, management and advisory services relating to all the aforementioned services, all excluding telephone and facsimile directories, provided to users in printed form or via electronic media; all included in Class 35
Class 41: Publication of texts, books and journals (other than publicity texts); publication of diagrams, images and photographs; education and instruction service; entertainment involving electronic and digital interactive media; electronic games services provided by means of the Internet; providing on-line electronic publications (not downloadable); consultancy, information and advisory services relating to the foregoing; all excluding telephone and facsimile directories, provided to users in printed form or via electronic media; all included in Class 41
Class 42: Computer services in relation to creating indexes of information, sites and other resources on computer networks; searching and retrieving information, data, web sites and other resources available on computer networks; licencing of digital data, still images, moving images, audio and text; computer programming; design, drawing and commissioned writing, all for the compilation of web pages on the Internet; creating and maintaining web sites; design of advertisement directory and listings; providing access to electronic publications and data via computer networks and/or telecommunication for the downloading and/or processing and/or displaying purposes; providing access to remote computers containing electronic publications, bulletin boards, database and information accessible via computer; rental and leasing of computer software and data; consultancy, the foregoing; all excluding telephone and facsimile directories, provided to users in printed form or via electronic media; all included in Class 42

Trade Mark:
Endorsement: The applicant has advised that the Chinese characters appearing in the trade mark may be transliterated as WONG BAR SI and translated into English as YELLOW BUS.

Regn No: 851034

Priority Date: 22 September 2000

Services:Class 35: Unaddressed direct mailer for direct advertisers to regional and rural areas.
Trade Mark: THE YELLOW ENVELOPE

Regn No:851576
Priority Date: 26 September 2000
Services:Class 35: Provision of information directory services on-line from a computer database or via the Internet

Trade Mark: YELLOW DUCK

As was pointed out[29] by French J (as he then was) in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 (“the Woolworths Metro case”), the logic of s 44 suggests the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, relevant other goods and services is “logically antecedent to” assessing the deceptive similarity of the trade marks under comparison. In this regard French J explicitly approves the observation in Wilcox J’s first instance decision in the Woolworths matter[30] that “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive”.
[29] In the context of closely related goods and services, but relevant also in the context of “similar goods” or “similar services” as defined in s 14 of the Act.
[30] Woolworths Limited v Registrar of Trade Marks (1998) 42 IPR 615 (at 624)
I will thus firstly consider whether the Telstra Goods and Services are similar to, or closely related to, the goods or services covered by the above three registrations.
It is in fact unnecessary at this point to consider whether any of the goods covered by Telstra’s application are similar to, or closely related to, any of the goods or services covered by registrations 828126, 851034 or 851576. This is because I agree with Mr Khoury’s submission that, at the very least, the “directory services” covered by the Class 35 specification of Telstra’s application are similar to:
· The services described as “provision of on-line directories” covered by the Class 35 specification of registration 828126 YELLOW BUS & Device (notwithstanding the specific exclusion in the specification of “telephone and facsimile directories, provided to users in printed form or via electronic media”); and
· The services described as “Provision of information directory services on-line from a computer database or via the Internet” covered by registration 851576 (35) YELLOW DUCK.
Moreover, the “advertising services” (which obviously includes all advertising services) covered by the Class 35 specification of Telstra’s application are undoubtedly similar to, (at least):
· The “advertising and promotion services” covered by the Class 35 specification of registration 828126 YELLOW BUS & Device (again, notwithstanding the specific exclusion in the specification of “telephone and facsimile directories, provided to users in printed form or via electronic media”); and
· The services described as “Unaddressed direct mailer for direct advertisers to regional and rural areas” (which are clearly a subset of “advertising services” generally) covered by registration 851034 (35) THE YELLOW ENVELOPE.
Accordingly, the question to be decided is whether the Telstra trade mark is “deceptively similar” to any of the three trade marks on which Mr Khoury relies and I do this on the basis that the marks under comparison cover the same services.
Deceptive similarity is defined within section 10 of the Act:
10Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
In comparing trade marks with a view to assessing whether they are deceptively similar, Dixon and McTiernan JJ provided the following guidance in Australian Woollen Mills Limited v F S Walton and Co Limited (1937) 58 CLR 641:
In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.
Subsequently, in the same case, they said:
It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.
Further, in assessing whether trade marks are deceptively similar one should keep in mind the context and the marketplace in which the trade marks are, or might fairly be, used. In In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 (at 380); 23 RPC 774 (at 777) Parker J, as he then was, said:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.
The principles to be applied under the Act in assessing deceptive similarity were conveniently summarised by French J in the Woolworths Metro case at [50]:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
With the foregoing principles in mind, I have carefully considered the Telstra trade mark and each of the trade marks on which Mr Khoury relies and how these marks might normally be used in the advertising or directories industries. It is apparent from Ms Mavrodis’ evidence quoted earlier that Telstra’s printed directory bearing the YELLOW trade mark “is distributed free of charge to almost every home and business in Australia”. The on-line version of Telstra’s directory, she says, “is accessed on average by 2.5 million consumers per month” and I am aware from my own experience that access to this directory is also without charge to the user. Conversely, businesses which want to advertise their products or services in Telstra’s directories must pay if they want particular space or prominence given to their listing and this is how the directories make their revenue. That said, my understanding is that the cost to an individual business is likely to be relatively low.
There is no evidence before me as to how (or indeed if) the YELLOW BUS & Device, THE YELLOW ENVELOPE, or YELLOW DUCK trade marks may be used, but it is reasonable to assume, I believe, that a similar “business model” to that of Telstra might be followed. That is, users of the directory services provided under the YELLOW BUS & Device or YELLOW DUCK trade marks (or recipients of THE YELLOW ENVELOPE branded direct mailing) are unlikely to be required to pay, while businesses specifically seeking to advertise via these means might[31] pay.
[31] It is also possible business listings on websites might be made free of charge to, indeed without the knowledge of, the individual businesses listed, with the website owner relying on the number of “hits” on its site to attract paid banner advertising or similar which would appear prominently on, say, the homepage of the site.
On the face of it users of such services would not therefore pay as much attention to the selection of the service as they might, say, when choosing an expensive overseas cruise or a motor vehicle: LANCER - Trade Mark Application [1987] RPC 303 (LANCER versus LANCIA for cars). On the other hand, those businesses which want prominence given to their listing might compare relative circulation figures and advertising rates before possibly making a decision to proceed.
The impression taken away from the trade marks on which Mr Khoury relies is, I consider, that they are conceptually, phonetically and visually quite distinct from the Telstra trade mark. With each of the potentially conflicting trade marks, the word “yellow” describes the noun which accompanies it as a distinctly coloured object of an individual kind. Each potentially conflicting trade mark, accordingly, tends to fix itself in the mind as being that object, albeit a yellow one of that genus, these being a bus which is yellow, an envelope which is yellow, or a similarly coloured duck. Although the adjective “yellow” is a potentially distinguishing element of the trade marks, the word tends, to my mind, to “fade” as a strongly distinguishing feature of the potentially conflicting trade marks in the presence of an arbitrary noun which actually distinguishes the services. However, the Telstra trade mark, consisting of the word “yellow” alone, is unlikely in my estimation to be confused with the trade marks on which Mr Khoury relies since it is the sole abstract concept which constitutes the trade mark – apparently a noun which is the name of “a bright colour like that of butter, lemons”.
I would add that in the case of the YELLOW BUS & Device trade mark I believe the inclusion of the device element and accompanying Chinese characters further reduces the risk of significant confusion or deception vis-à-vis the Telstra trade mark.
To conclude, I do not on balance consider that there is a real tangible danger of deception or confusion occurring if the Telstra trade mark and the three registered marks on which Mr Khoury relies are used in a normal and fair manner for the respective goods and services they cover.
It follows that Mr Khoury has not established his s 44 ground of opposition.

Opposition 2

While Telstra is pressing grounds under both ss 44 and 60 in opposition 2, as discussed in paragraph 22 above Ms Schoff submitted that both grounds are effectively contingent on a finding that the yellowbook trade mark is deceptively similar to either Telstra’s YELLOW trade mark or its YELLOW PAGES trade mark. For the reasons submitted by Ms Schoff I agree, and it was also common ground with Mr Khoury at the hearing.
I mention that it was not in dispute that because the opposed application was filed prior to 23 October 2006, (when amendment to section 60 made by the Trade Marks Amendment Act 2006 came into force), the section applies as it stood prior to such amendment[32]. The relevant section is set out below:
[32] See Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 80

Trade mark similar to trade mark that has acquired a reputation in Australia

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.

It was also common ground in the oral submissions of the parties that, in accordance with established practice, the “.com.au” element of the yellowbook trade mark should be ignored when assessing whether the mark was deceptively similar to either the YELLOW or YELLOW PAGES marks. Thus the only part of the yellowbook trade mark which I am considering here is the element “yellowbook” itself[33]. In this regard I also note that Mr Khoury refers to the trade mark yellowbook.com.au in his evidence as simply YELLOW BOOK. (He says, for example, “Fortunately, the panellist found that YELLOW BOOK is not confusingly similar to YELLOW PAGES and since then, we have grown substantially.”)
[33] For the sake of completeness I mention that the Trade Marks Office Manual of Practice & Procedure deals with this issue (albeit in relation to s 41, but just as applicable in the case of s 44) at Chapter 14.2
I confirm I am also proceeding on the basis that the form of the word (or words), that is whether YELLOW BOOK or yellowbook, is not material to my decisions in these proceedings.
Dealing firstly with a comparison of the yellowbook trade mark and Telstra’s YELLOW mark, then, consistent with my analysis above in connection with opposition 1, I do not consider these marks to be deceptively similar. In the yellowbook trade mark, the adjective “yellow” is on the face of it qualifying, or describing, the word “book”, and the impression which is taken away from the trade mark is that of a book which is yellow. By contrast, in the Telstra trade mark the total focus is on the word (apparently a noun in this case) “yellow” itself. The impression and memory taken away from the trade marks and the recollection of the trade marks is accordingly likely to be different in my view.
Turning now to a comparison of the yellowbook trade mark and Telstra’s YELLOW PAGES mark, Mr Khoury submitted that the comparison should be governed by the principle in Cooper Engineering Company Pty Ltd v Sigmund Pumps Limited (1952) 86 CLR 536 (“Rainmaster” and “Rain King” for sprinklers and irrigation equipment) where Dixon, Williams and Kitto JJ said:
The two words are so unlike to the eye and to the ear that counsel for the appellant was forced to rely on the likelihood of deception arising from the two words conveying the same idea of the superiority or supremacy of the article as a mechanism for making a spray similar to falling rain or artificial rain as it was called during the argument. But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. As Lord Parker said in the passage cited, you must consider the nature and kind of customer who would be likely to buy the goods. A purchaser of spray nozzles and sprinklers would not be likely to be lacking in discernment. He would not be in a hurry to buy. He would not be likely to pay any attention to the presence of a common word like rain in the combination. That prefix already appears in other trademarks for goods of the same description sold on the Australian market such as Rainwell, Rainmaker, Rain Queen, and Rainbow.
However, the High Court in the above quotation emphasised that purchasers of the relevant goods “would not be likely to be lacking in discernment” and “would not be in a hurry to buy”. This may be contrasted with the user of the parties’ directories, particularly on-line directories. As Allan J commented in the NZ yellowbook case of the directory services provided under the YELLOW PAGES trade mark:
… but of its nature the act of using [the] directory service is focused upon the desired outcome – so anyone using a directory is likely to pay little more than fleeting attention to branding and trade marks …
The principle in the LANCER decision cited earlier also applies in this regard, namely that the less expensive goods and services are, the less likely it becomes that the trade mark will be carefully considered by potential customers.
I also note the comments of Collier J in Television Food Network, G.P. v Food Channel Network Pty Ltd (No 2) (2009) 80 IPR 314 (at [147]) in relation to the trade marks FOOD NETWORK and FOOD CHANNEL:
[T]he fact that the word “network” does not sound like “channel”, an issue raised by the respondent in written submissions, is in my view irrelevant. As the applicant submits, there are many cases in which relief has been granted in relation to marks which do not sound similar but the allegedly infringing trade mark has been found to be deceptively similar to the claimant’s mark (I note, for example, such cases as Re Application by PPI Industries Pty Ltd (1989) 17 IPR 667 (Poly drain and Poly Pipe), Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd [2006] FCA 767; (2006) 69 IPR 243 (“Whackos” and “Dogs go wacko for Schmackos”) and Newell v Mattel Inc (2001) 55 IPR 648 (Bar-B-Cute v Barbie) as well as the extensive list of such trade marks and decisions in the Appendix to Shanahan pp 955-982);
[T]he contention of the respondent that trade mark 967804 and the applicant’s trade marks are substantially different in appearance, and have no resemblance, is not an answer to a claim of deceptive similarity. That factor is of much greater relevance where the claimant alleges substantial identity between the trade marks under s 44(1);

Perhaps most importantly, the High Court in the Cooper Engineering case considered the common word “rain” to be non-distinctive as far as sprinklers and irrigation equipment were concerned. As I observed above, however, while the word “yellow” may be readily understood as referring to the colour of Telstra’s printed directories, I do not consider the word has a similar function in relation to the services Telstra has for many decades provided under the YELLOW PAGES mark and, in particular, in relation to the services in Class 35 covered by Telstra’s longstanding registration 545668. The word “yellow” is thus one of the distinguishing features of Telstra’s YELLOW PAGES trade mark, at least as far as services in Class 35 are concerned, and must form an important part of the comparison of that mark with the yellowbook trade mark.
Moreover, the common element YELLOW occurs at the beginning of the parties’ trade marks and this is likely to influence the way in which the trade marks are remembered and recalled. As was said in London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264 (at 279):
The only similarity in the word “Tripcastroid” to “Castrol” is in the letters composing the centre of the new word. The termination of the new word is different. Though I agree that, if it were the only difference, having regard to the termination of words, that might not alone be sufficient distinction. But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.
Further, the words “book” and “page” are, as Ms Schoff submitted, associative ideas and thus the trade marks have a similar idea behind them which is likely to lead to the trade marks being remembered and recalled in a similar way: Jafferjee v Scarlett (1937) 57 CLR 115.
It is difficult to regard the word “book” as distinguishing yellowbook’s services any more than does the word “pages” distinguish Telstra’s relevant services, (given the word “pages” is commonly used descriptively in relation to both printed matter and websites). The word “book” is also commonly used in the directories trade, as in the expression “telephone book” for example. Indeed, early versions of the yellowbook website had a picture of a telephone book on the home page.
As indicated by French J in the quote from the Woolworths case in paragraph 61 above, to show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. Confusion has elsewhere been explained as being different from deception. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, for example, Richardson J explained that “deceived” implies the creation of an incorrect belief or mental impression, while causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public. Moreover, where the deception or confusion alleged is as to the source of the goods or services, “deceived” is equivalent to being misled into thinking that the goods or services bearing the applicant’s mark come from some other source, and “confused” is equivalent to being caused to wonder whether that might not be the case.
I am satisfied on the balance of probabilities that such is the case here and that use of the yellowbook trade mark is likely to confuse.
Accordingly, Telstra has established its grounds under sections 44 and 60 of the Act.

Decisions

Section 55 of the Act relevantly provides:
55 Decision
(1)         Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a)         to refuse to register the trade mark; or
(b)         to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.

Opposition 1

Subject to the outcome of a still pending opposition to trade mark application 963492 YELLOW by another party, Phone Directories Company Australia Pty Ltd, I have decided that the application may otherwise proceed to registration one month from the date of this decision. That said, if the Registrar has been served with a notice of appeal by Emmanuel Khoury of my decision, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s order or direction.

Opposition 2

I refuse to register 1138225 (35) yellowbook.com.au.

Costs

In the event Telstra was successful, Ms Schoff requested an award of costs in its favour. It is appropriate that costs follow the outcomes of these proceedings and I award costs against yellowbook and Mr Khoury in the respective proceedings at the official scale set out in the Trade Marks Regulations 1995.

Michael Kirov

Hearing Officer

Trade Marks Hearings

21 May 2010