Emmanuel Khoury v Telstra Corporation Limited

This matter concerned an opposition by Emmanuel Khoury to Telstra Corporation Limited's application to register the trade mark YELLOW solus. The dispute arose in the context of an opposition proceeding before the Registrar of Trade Marks, with the decision being delivered by Kirov J.

The court was required to determine whether the trade mark YELLOW solus was capable of distinguishing Telstra's goods and services in Australia, considering its use in the country. This involved assessing the relevance of a prior World Intellectual Property Organization (WIPO) decision, the nature of the word "yellow" in relation to the goods and services, and whether Telstra was required to establish acquired distinctiveness for registration. The court also considered the significance of other traders using the word "yellow" or the colour yellow in their directories and trade marks.

Kirov J found that the WIPO decision was not determinative, as it was final and the panellist was limited to considering registered trade marks, not Telstra's broader application for YELLOW solus. His Honour disagreed with the WIPO panellist's apparent view that "yellow solus" was not an essential feature of Telstra's YELLOW PAGES trade mark, but noted this was not the issue before him. The court clarified that Telstra was not required to prove acquired distinctiveness, but rather that the mark was "capable of distinguishing" the relevant goods and services. His Honour also disagreed with the WIPO panellist's characterisation of "yellow" as a "highly generic" term for Telstra's goods and services. The court noted that while other traders might use the word "yellow" or the colour yellow, this did not directly impact the inherent adaptability of the word mark YELLOW to distinguish Telstra's offerings.

Ultimately, the Registrar decided that Telstra's application for YELLOW solus could proceed to registration, subject to a pending opposition by another party. However, the Registrar refused to register the trade mark yellowbook.com.au. Costs were awarded against yellowbook and Mr Khoury.