Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited

[2011] ATMO 34

TRADE MARKS ACT 1995

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

Re:Opposition by Phone Directories Company Australia Pty Ltd to registration of trade mark application 963492 (classes 9, 16, 35, 38, 41, 42) - YELLOW - filed in the name of Telstra Corporation Limited.

Delegate:	T. E. Williams
Representation:	Opponent:  Sam Ricketson of counsel, instructed by Christina Moloney of Middletons, solicitors Applicant:  Ed Heerey of counsel, instructed by Kasia Dyjak of Mallesons Stephen Jaques, solicitors
Decision:	2011 ATMO 34 S 52 opposition: S 41, 44 and 59 grounds not established, registration proceeding subject to appeal of other opposition

Background

1. Telstra Corporation Limited (“the applicant”) has applied to register a trade mark consisting of the word YELLOW (“the trade mark”).  That application was given the number 963492 by the Trade Marks Office.  The goods and services specified in the application are:

   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

2. The application was filed on 25 July 2003 (“the priority date”). It was examined and subsequently accepted under the provisions of s 41(5) of the Trade Marks Act 1995 (“the Act”).  

3. Section 52 of the Act provides that a person may oppose registration of an accepted application. In separate proceedings (“the Khoury opposition”), Emmanuel Khoury has opposed registration of the application. A delegate of the Registrar of Trade Marks has determined that no ground of opposition has been established in the Khoury opposition but Mr Khoury has appealed that decision to the Federal Court, which will decide the opposition as an appeal de novo.

4. Another proceeding, that with which I am now concerned, has resulted from the filing of a notice of opposition by Phone Directories Company Australia Pty Ltd (“the opponent”).  The opposition that has followed from this (“the current matter”) is entirely separate from the Khoury opposition.  In the current matter both the applicant and the opponent have filed and served copies of evidence, which I will describe in broad terms shortly, to support their respective positions.  .  At the end of that process the current matter was listed for a hearing, prior to which I directed that the parties exchange written submissions, starting with those of the opponent.

5. I heard the current matter in Melbourne in December 2010.  Both the applicant and the opponent were represented by counsel, the applicant by Ed Heerey, instructed by Kasia Dyjak of Mallesons Stephen Jaques, solicitors and the opponent by Sam Ricketson, instructed by Christina Moloney of Middletons, solicitors.  What follows is my decision, made under delegation from the Registrar of Trade Marks.

   Evidence relied on by the parties

6. For convenient reference, I will now list and briefly describe the evidence.  This consists of declarations by:

   For the opponent

   Catherine McGarry:  the opponent’s General Manager.  A reference, in what follows, to usages of yellow paper or of the word yellow by parties other than the applicant will typically be a reference to material forming part of Ms McGarry’s declaration.

   Sarah Nicholson:  a lawyer whose declaration provides details of tourism from Australia.

   Thomas Greene:  Chairman of Horizon Media Pty Ltd, owners of trade mark registration 851034 THE YELLOW ENVELOPE, a trade mark used in respect of direct mail advertising. 

   Geoffrey Moule:  a former employee of a company that produced commercial directories entitled BIG COLOUR PAGES from 1987 until 2002.  The classified and postcode sections of these were printed on yellow paper.

   Emmanuel Khoury:  a director of Yellowbook.com.au Pty Ltd.  That company provides a commercial directory website at yellowbook.com.au.

   Christina Moloney:  a solicitor.  Her declaration updates the picture given by Ms McGarry of usages of the word “yellow” on the websites at, inter alia, yellowbook.com.au and yellowdirectory.com.au.  The declaration gives evidence about online classified directories in various countries including the UK and the USA. Ms Moloney’s declaration also shows the extent to which the applicant was using the trade mark in March 2010

   For the applicant

   Kerryn Underwood:  legal counsel employed by Sensis Pty Ltd (“Sensis”).  Sensis is a wholly owned subsidiary of the applicant and is the primary user of the trade mark.  Ms Underwood refers to the actions the applicant and Sensis have taken to police the rights they assert in respect of, inter alia, the colour yellow and the word yellow.  Her declaration annexes a copy of the declaration of Stephen Harvy, which I describe below

   Stephen Harvy:  the Group General Manager of Sensis.  The original of Mr Harvy’s declaration was filed at the Trade Marks Office for consideration by the examiner of trade marks prior to the application being accepted.  Mr Harvy gives details of a marketing assessment of the YELLOW PAGES trade mark, and the subsequent move to YELLOW solus.  In what follows, a reference to the trade marks used by the applicant/Sensis will typically be based on a reference to voluminous material annexed to his declaration. 

   Nadine Courmadias:  Legal counsel at Sensis.  Ms Courmadias has made the declaration that constitutes the further evidence on which applicant, with my permission, is relying.  The further evidence essentially shows that usage of YELLOW has not ceased and provides more up-to-date information about certain court proceedings Sensis has instigated against, inter-alia, the opponent.  These involve both copyright and other issues.  Some aspects of the proceedings have been deferred while other issues between the same parties continue to be litigated.  It would not be appropriate to attempt to analyse the state of play of those matters.

   Grounds of opposition considered

7. For completeness, I find that the grounds of opposition not pressed at the hearing have not been established.  The same may also be said of a general discretionary ground set out in the opponent’s notice of opposition.  This reads as follows (my emphasis added):

   By reason of the matters set forth in any one or more of the foregoing paragraphs or otherwise in the special circumstances of the case, the Trade Mark should not be registered in relation to all or any of the goods or services.

8. That ground is redundant where it duplicates the work of grounds that are both listed in the notice of opposition and explicitly available under part 5 of the Act. Insofar as it purports to go beyond this and invoke my discretion under the Act it is misconceived, since I have none except in the specific and limited context defined by s 55, to which I will come in due course.

9. This brings me to the grounds on which the opponent relied, those under sections 41, 44 and 59 of the Act, and the related question of the onus that is to be met in those matters. Mr Heerey accepted Mr Ricketson’s analysis, which I also agree is the correct approach. Mr Ricketson referred to the recent discussions of the competing lines of authority by Kenny J in Sports Warehouse, Inc v Fry Consulting Pty Ltd (“Sports Warehouse”) [2010] FCA 664, [26] to [40] and Dodds-Streeton J in Suyen Corporation v American International United Limited [2010] FCA 638, at [178] to [192]. He submitted:

   In the absence of clear appellate authority on this issue, it is submitted that the ordinary standard (of balance of probabilities) should be applied: see Sports Warehouse, [39], per Kenny J, and see Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 (“Pfizer Products”) at 605, [18] (Gyles J) and Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60, 70 [26] (Sundberg J).

   There is an exception to this general proposition about the burden resting on the opponent that arises in relation to subss 41(5) and (6). Thus, while the ordinary civil burden rests on the opponent with respect to the issue of inherent distinctiveness under subs 41(3), it is clear that subss 41(5) and (6) place the onus back on the applicant for registration. As Kenny J said in Sports Warehouse at [40]:

   “…these provisions require the applicant for registration to “satisfy” the Registrar (s 41(5)), or “establish” (s 41(6)), that the relevant criteria are met: compare Chocolaterie Guylian at 68-69 [21]. As Branson J said in Blount at 56, referring to Rejfek v McElroy (1965) 112 CLR 517 at 521:

   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 . . . 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.”

   Under s 41(5), the Registrar must be persuaded by the applicant on the balance of probabilities that the trade mark does or will distinguish, having regard to the considerations in s 41(5)(a). The standard is the same under s 41(6), where the applicant must establish on the balance of probabilities that the mark does distinguish “because of the extent to which the applicant has used the trade mark before the filing date”.

10. That being so, it is opportune to begin with s 41.

    Section 41.

11. The key to any analysis under s 41 is s 41(3), which reads:

    (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.

12. As Dodds-Streeton J noted in Suyen, supra, “the ordinary civil burden rests on the opponent with respect to the issue of inherent distinctiveness under subs 41(3)”. Mr Ricketson argued that the trade mark, in respect of all of the goods and services specified in the application, was entirely lacking inherent adaptation to distinguish. He referred me to the usually-quoted authorities, Lord Parker of Waddington and Kitto J, which I will not set out at this point. He said that the matter was ultimately within the scope of Kenny J’s words when referring to that issue in Sports Warehouse, supra, as regards both goods and services: 

    …the Court is thus required to consider whether other traders are likely, in the ordinary course of their businesses and without improper motive, to want to use the same mark, or some mark closely resembling it, upon or in connection with their own services.

13. He also pointed out that Note 1 to s 41(6) relevantly states:

    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;

14. His argument was that YELLOW is not capable of distinguishing the applicant’s goods or services from those of other traders because:

    Without labouring the point at too great a length, the word “yellow” is an adjective that is directly applicable to describe a colour that is either already used in relation to many of the goods and services in the nominated classes or which otherwise should be readily available for use (along with all the other colours of the spectrum) for all of the said goods and services.

15. He went on to test this with regard to some of the goods and services in the six classes set out in the application.  I will look at the results of this testing in the light of Mr Heerey’s counter-submissions shortly.  Before doing so, I note one very pertinent point in Mr Ricketson’s argument.  In the New Zealand case of Cadbury Ltd v Effem Foods Ltd (2007) 78 IPR 672 the Court of Appeal agreed with MacKenzie J at first instance, and said:

    [25] … Effem submits that the word PURPLE is not inherently adapted to distinguish Cadbury’s goods.  It could only acquire distinctiveness through use such as was the case in Blue Paraffin Trade Mark [1977] RPC 473 (CA). In its submission, the word PURPLE denotes the colour purple and is or may legitimately be used to describe the non-origin attributes of goods. It is in common use. It cannot therefore distinguish the goods of one trader from those of another. In Effem’s submission, where a word is descriptive, which the word purple is, a restriction to the specification of goods which excludes goods covered by that description does not necessarily alter the significance of the word and render the word itself distinctive. The word PURPLE must be considered in the context of the relevant market where purple colours are commonly used and where the word purple is likely to be used as a descriptor. There is no separate sub-market for non-purple goods.

    [26] Effem further submits that MacKenzie J was correct to consider that other traders may be hindered in how they use the word purple in respect of goods similar to those to which registration applied - that is on purple or partly purple goods in class 30. In its submission, the distinctiveness inquiry is wider than an inquiry of whether actual infringement proceedings would succeed.  Possible defences (such as that any use is as a bona fide description) should not be taken into account when considering whether registration should be allowed.  The privilege of monopoly should not be conferred where it might require honest people to look for a defence - see COLORCOAT Trade Mark [1990] RPC 511 at 516–17 Robin Jacob Esq QC and McCain Foods at [49].

    [27] We accept Effem’s submissions on the issue.  In our view, the word PURPLE is in most cases inherently descriptive and connotes, as MacKenzie J held, the colour purple.  Goods in the same market as the goods for which registration is sought are commonly coloured purple. Traders would be inhibited in using the word purple in relation to those goods.  The word is thus not inherently adapted to distinguish Cadbury’s goods from those of any other trader, although it could become distinctive by use.  This is not to suggest that this will always be the case.  There will be cases where colour does not serve any utilitarian, ornamental or economic function or where the colour is an “out of left field choice”.  See the discussion in M Davison, K Johnston and P Kennedy, Australian law of trademarks (sic) and passing off, 3th ed, Lawbook, Pyrmont, NSW, 2003, at [2.90]–[2.100], [6.60] and [6.65].

    [28] We do not accept Cadbury’s criticisms of the judge’s decision.  We, like the judge, are unable to divorce the word PURPLE from the colour purple, despite Cadbury’s submission as to other connotations of the word such as royal, imperial and regal.  We also consider that the judge was correct to examine the question of whether other traders would be inhibited in their use of the word PURPLE in relation to goods in the same market as those for which registration is sought.

16. This approach, in the context of the Australian legislation, would suggest that the outcome under, initially, s 41(3) will depend on the extent to which the usage of the colour yellow, by other traders acting only with proper motives, is analogous to the New Zealand situation with respect to the colour purple.

17. As regards the honesty of the usages of the trade, Mr Ricketson noted the opponent’s evidence (Ms McGarry’s declaration) as to the overseas recognition of the colour yellow as denoting, in a generic way, commercial telephone directory services.  Some of the applicant’s own evidence tends to support this.  Mr Harvy’s declaration document 3 includes Yellow ™ - a timeline.  This shows, for the year 1975:

    The Yellow Pages ® is born.  The pink pages of the classified directory are changed to yellow, which is the internationally recognised colour for classified directories.  The conversion is also prompted by a world shortage of pink paper and the pollution problems associated with its manufacture. 

18. He argued that this reference, confirmed in objective material produced by the Superbrands Council[1], stood as a negation for any suggestion that use by others, including the opponent in the present matter, was inherently suspect. 

    [1] The Superbrands Council is, according to the applicant’s own submissions “an independent body made up of some of Australia's leading marketing, communication and business experts who evaluate the largest brands in Australia and around the world on a regular basis”.

1. I am prepared to accept, on the basis of tourism, see Ms Nicholson’s declaration[2], that a significant number of Australians would be familiar with the overseas situation.  As to the Australian situation, Mr Ricketson relied on other material in Ms McGarry’s declaration, which lists a number of commercial directories produced within Australia - most with yellow pages, some with just a yellow highlight or tab - that pre-date the present application, though I note that none of them pre-date the first usage of the trade mark YELLOW PAGES, or of yellow paper, by the opponent.

   [2] This declaration shows destinations selected by travellers from Australia.  These can be compared with the counties where Ms McGarry’s evidence suggests that both the word and the colour yellow are arguably generic for classified directories, particularly the USA, or where the proprietor is not Telstra.

2. In Mr Ricketson’s view, the usage shown in Ms McGarry’s declaration, including also the opponent’s own usage, would establish a pattern followed by a significant spread of traders.  This, in his view, showed both that international usage of yellow paper was recognised and mirrored in Australia, and that it had been a long-standing and legitimate theme of the opponent’s usage.  Perhaps, at the edges of the evidence, some of the detail is not absolutely clear but I think the safe finding is that yellow paper was used to a significant extent by a number of traders before the priority date, along with at least some usage of the word “yellow”.  This seems to be associated with usage on related websites, where the colour is prominent, showing presumably that the website is an analogue of a paper directory performing the same function.  Thus, as Mr Ricketson argued, registration of the word “yellow” as a trade mark would “provide considerable restraints” on what other traders could do by way of such usage on the internet. 

3. Mr Ricketson did concede that the applicant was potentially able to rely on a greater degree of inherent adaptation to distinguish in respect of services than in respect of goods.  He strongly resisted, however, the argument that the trade mark YELLOW, looked at from first principles, was inherently capable of distinguishing any services.  That proposition was not, in respect of services, a “lay-down misère” as Mr Heerey had suggested. 

4. As Mr Ricketson noted in his submissions, there is a great breadth of goods and services specified in the application. The goods include, to use two of his examples, software for veterinary diagnostics, and for psychological profiling. It would be possible to extract other examples of goods and services on which one might be caused to wonder if the applicant intended to use the trade mark. However, the terms of s 41 will not require me to “examine” the goods and services specified in the application and assess them, one at a time, under subsection (5) or (6) as appropriate. The time for examination has passed. To judge from the evidence, the opponent has not engaged in these proceedings to champion the rights of such diverse groups as the writers of veterinary diagnostic software or, as another example, the publishers of erotica. Nothing in what has been said either before Guylian or since then suggests that the applicant is under an initial onus with respect to s 41(3) unless there is some factual basis on which it can be said that the Registrar is thereupon “required to be satisfied” under either (5) or (6).  In the examination forum, as I said in Blockbuster Entertainment Inc v Civic Video Pty Ltd [1999] ATMO 25, unreported, “the Trade Marks Office strives, in responsibly applying the provisions of s 41, not to raise matters that are unreasonable, unnecessary or speculative”. Post acceptance, the proper approach is necessarily slightly different because the application has been accepted and the proceeding is now adversarial. As regards the provisions of s 41(5) or (6), it would be for the opponent to establish that there is, in the first place, an onus upon the applicant. This it could do either by providing relevant evidence, or by making submissions pointing to circumstances that did not need the weight of evidence to trigger an adverse finding under s 41(3). The appropriate course as regards s 41 in the present matter is to deal with the specifics that arise from the evidence of the opponent.

5. I will therefore regard Mr Ricketson’s general comments about the breadth of the specifications of goods and services as being for cautionary purposes only.  By this I mean that, while I will approach the specifications as being wide in scope, I will confine my analysis to the goods and services of principal interest to the parties - the “core activities” of the applicant, as Mr Heerey put it - those on which the opponent’s submissions had clear and direct focus.  At the hearing, I gave the applicant the opportunity to “get rid of the waffle” in the scope of the application.  Mr Heerey declined to do so, saying that if he could meet the opponent’s case at its highest, in respect of the goods of interest, the applicant faced no onus elsewhere.

6. Mr Ricketson noted, in particular, that Ms Molony’s declaration gave an up-to date picture of ongoing Australian usage of yellow, as a word and as a colour, by parties other than the applicant.  It can be seen from Ms Underwood’s declaration that the applicant and Sensis have brought pressure to bear on other traders to discourage their use of YELLOW as a trade mark or as part of a trade mark.  There is reference to court proceedings in some instances and to written communication in others.  Consistently, Ms McGarry’s declaration shows that the opponent, which has published directories since 1993, has recently ceased to designate as the “YELLOW SECTION” the portion of the directory that was, and still is, printed on yellow paper.  Mr Ricketson did not dispute that the applicant’s use of YELLOW PAGES as a trade mark for its well-known yellow-coloured directories was extensive.  He accepted that the applicant’s directories were considerably more common than those of any other trader but he steadfastly sought to deny that improper motives could be imputed to those traders who used yellow paper and who used the word “yellow” in concomitant ways. 

7. Mr Heerey described the usage by others of either the colour yellow or the word “yellow” as “scant indeed”.  He noted that an adverse inference had been drawn in Sports Warehouse[3] about the usage by others of the words TENNIS WAREHOUSE.  Consistently, in Blue Paraffin Trade Mark[4] the UK Court of Appeal had found that matters had reached a stage where: “since… no other trader could have any reason to dye paraffin blue except for the purpose of benefiting from the Esso Company’s reputation, no other trade could have any proper occasion to use the word “blue” to describe his own product.

   [3] [2010] FCA 664 at [103]-[105]

   [4] [1977] RPC 473 at 501. The Court of Appeal affirmed the view of the judge at first instance on that question.

8. As Mr Heerey put it in his written submissions:

   ln any event, putting aside the question of third parties' improper motive, while the Opponent has attempted to collate several instances of third parties using the word YELLOW in Australia, it is clear that such use is limited to a small number of isolated local regional directories and obscure websites. On any view, such use by third parties is miniscule compared to Telstra's ubiquitous use since the mid 1970s, throughout Australia, of yellow colouring and the various YELLOW PAGES trade marks on its range of products as set out in more detail in part 5.7 below.

   Further, and perhaps most importantly, the Opponent's evidence does not demonstrate any business imperative requiring any such person to use the colour yellow, still less the word YELLOW, in respect of such products, when any other colour in the spectrum, or combination thereof, is equally available and useful.

   Telstra submits that the only real reason that such businesses will think of and wish to use the colour yellow, and more particularly the word YELLOW, is because the market leader Telstra has done so throughout Australia for decades.

   The Opponent's evidence includes various references to use of the colour and word YELLOW outside Australia. However the Opponent's Amended Outline of Submissions makes only passing reference to such evidence[5]. Telstra respectfully submits that it is irrelevant or at best only peripherally relevant, as it does not predate Telstra's first use of yellow colouring and the use of the trade mark YELLOW PAGES in the mid 1970s and does not overcome the threshold point that any colour in the spectrum could be used for such goods or services.

   In view of the above, Telstra submits that the Opponent has not discharged its onus to establish that YELLOW should be rejected under s 41(3).

   [5] I note here that the relevant section of the opponent’s submissions does not make extensive mention of overseas use, but does assess the goods and services in the various classes against Australian usage of “yellow”, as a word or as a colour, by third parties.

9. Mr Heerey’s submission would reduce the actions of other traders to simple binary systems:  either those traders “must” use yellow because it is an “imperative”, or their emulation of what the market leader does must be suspect.  It seems to me that in the second paragraph above Mr Heerey is mistaken about the complexity of the question posed in Michigan[6].  Kitto J refers to the ultimate question of whether a mark is adapted to distinguish as requiring a balancing of the extent to which a trade mark is “inherently unadapted” against the degree of acquired distinctiveness.  That ultimate question is, with my emphasis added, and some slight truncation of the original:

   … 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 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 ... and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem ... 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 improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. ...” The interests of strangers and of the public are thus bound up with the whole question ... 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.

   [6] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 513-514.

10. The evidence supports a finding that the colour yellow is recognised, overseas and at least to some extent in Australia, as denoting a classified directory per se, in either paper or virtual form. This, without anything that would amount to a “business imperative”, is sufficient to establish a legitimate motive for such traders wanting to use yellow, or produce a directory with a yellow segment. I do not say that such a finding would preclude the existence of other reasons, though I do not think that these are necessarily underhand as Mr Heerey suggested. It may be no more than sound business sense to legitimately emulate the directory products of the applicant, as opposed to illegitimately imitating them. Be that as it may, in my assessment of the matter, and for reasons like those discussed by the New Zealand Court of Appeal, the colour yellow is not, in terms of s 41(3), capable of distinguishing on the basis of inherent adaptation alone, in respect of either classified directories or what I will broadly call related services and related software. I cannot, however, agree that matters in this country are, or were at the priority date, so directly comparable that the trade mark YELLOW is to be seen as entirely devoid of inherent adaptation. Despite Mr Ricketson’s careful analysis of the evidence, I am simply not convinced that YELLOW, solus, should be seen as a sign within the scope of Note 1 to s 41(6), to which I have already referred.

11. That being so, I turn to the provisions of s 41(5), which counsel addressed in detail both in their initial written submissions and orally. Given the wording of the provision:

    (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.

    counsel addressed the usage of the trade mark by the applicant.  Mr Heerey’s submissions provide a helpful analysis of how this is inter-related with its use of the trade mark YELLOW PAGES. 

12. Mr Harvy’s declaration shows that, after producing the PINK PAGES directory from 1926, the applicant adopted the YELLOW PAGES trade mark in 1975.  It is not clear to me just when the “walking fingers” device was first used, but its use has been almost inseparable from that of YELLOW PAGES until 2006.  The trade mark YELLOW was put into use in September of that year as a refreshed or updated version of the YELLOW PAGES trade mark, which was seen at that time as becoming increasingly out of date or old-fashioned for use in the developing online environment. 

13. Mr Heerey uses Mr Harvy’s declaration as support for his formulation of the matter as follows; that in 2006:

    The entire range of Telstra's business directory products (in 2006) commenced promotion under the trade mark YELLOW, and since that time Telstra has made extensive use of the mark on its classified directory website, in its promotional campaigns, on collateral material handed out to its customers and on the millions of hardcopy directories it distributes annually to every household and business in Australia. In the first 12 months after this relaunch, Telstra spent over $11 million promoting the YELLOW trade mark.

    The launch of the trade mark YELLOW received significant press attention in September 2006 and Telstra allocated a budget of just under $20 million for the financial year 2006/2007 to promote its business directory products by reference to the trade mark YELLOW.

14. The change to YELLOW was, clearly, heavily promoted.  The evidence shows, however, that YELLOW had barely been adopted when the applicant decided, for reasons that are not stated, to re-emphasize the usage of YELLOW PAGES.  Indeed, the applicant has sought permission to bring in further evidence (the Courmadias declaration) to, among other things, verify that the trade mark YELLOW is still used.

15. Mr Ricketson made a number of other points about that usage.  Firstly, it did not commence until three years after the priority date of the application.  This was significant because, as per Kenny J in Sports Warehouse:

    Thus, under s 41(5), an applicant relying on use prior to the lodgement date will need to show that the mark has in fact been used as a trade mark prior to the lodgement date so as to have acquired the requisite capability to distinguish the applicant’s goods: Chocolaterie Guylian at 88 [84]

16. He reminded me that, per Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd[7]:

    What requires emphasis, though, is that subsequent use evidence, no less than evidence of intended use, is relevant only to the question of whether the mark possessed the required capability at the priority date. It will not assist an applicant for registration if that use demonstrates no more than (i) the mark has the potential or capacity to acquire that capability in the future; or (ii) that the mark has acquired distinctiveness only because the relevant community has since the priority date been “educated” to see the mark as an indicator of the origin of particular services: British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 306; Re Application by Cadbury Ltd (2002) 55 IPR 561 at 570.

    [7] (2004) 61 IPR 257 at 264

17. Mr Ricketson was also critical of the applicant’s reliance on usage of YELLOW with other trade marks.  He acknowledged the case law relevant to the use of two or more trade marks together[8].  However, as he said, the outcome of such usage depends on a careful analysis of the facts of each particular case.  Relevantly, in Sports Warehouse:

    Where an application for registration relies on use, the question is whether the particular sign for which registration is sought has itself been used as a trade mark so as to become capable of distinguishing the relevant goods or services. In my view, when the “TW” logo was placed in close association with the words “TENNIS WAREHOUSE” in 2003, this had the effect of substantially diluting any trade mark significance that attached to the words “TENNIS WAREHOUSE” by themselves.

    [8] Mr Heerey relied on Alcon v Bausch & Lomb (Austratia) Pty Ltd (2009) 83 IPR 210 at 239 [156] per Foster J; Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 lPR242  at 247 [22]-[28] per Bennett J; Nature's Blend Pty Ltd v Nestle Australia Ltd [2010]FCA 198 at [40] per Sundberg J; George Weston Foods Ltd v Manildra Flour Mills Pty Ltd (1999)47 IPR 145 at 150 per Hearing Officer Williams.

18. This, he suggested. made my job harder.  In his view, it was not easy for me to be satisfied that YELLOW reached the necessary benchmark since YELLOW was either “swamped”, as in Tennis Warehouse, or was “really only part of some larger composite whole”, such that one could not point to a usage of YELLOW.  On what basis, he asked, could I be “satisfied” as the legislation required?

19. As to this, Mr Heerey simply argued that I should look at the evidence, which well supported the inference that, at the priority date, the trade mark YELLOW had the necessary capability to distinguish.  Much of his submissions stress the long-standing recognition of YELLOW PAGES but I think Mr Ricketson was rightly critical of undue reliance on such usage.  Where I think Mr Heerey finds better, albeit post-filing, support for his argument is in the FIND IT IN YELLOW campaign of February 2005 – June 2006, entailing the spending of $9 million in promotion.  Mr Ricketson argued that this was another and different trade mark, and on that basis invited me to dismiss FIND IT IN YELLOW as being irrelevant.  I cannot agree with him.  To me, for all that FIND IT IN YELLOW is not YELLOW per se, it shifts the focus of earlier trade marks from the “pages” of YELLOW PAGES to the “yellowness”, as it were, of those pages. 

1. Mr Ricketson noted that the FIND IT IN YELLOW campaign did not allude to any future trade mark “based on YELLOW”, and that the campaign was linked to YELLOW PAGES. He is no doubt correct on the latter point, although one might wonder how the applicant could profitably have avoided reference to that linkage. However, I think that this campaign, which Mr Ricketson suggested was geared towards YELLOW PAGES, perhaps to make that trade mark “more trendy”, at least prepared the ground for the subsequent advent of YELLOW as a trade mark. In saying this, I note Mr Ricketson’s observation that nothing in the documents about FIND IT IN YELLOW shows that there was any intention, at that point in time, to move to YELLOW, solus, as a trade mark. Such preparation of the ground for YELLOW as might have happened was, on the face of it, pure serendipity. That, however, is another question, about which I will have more to say in terms of s 59. The critical thing, in terms of my assessment of the matter under s 41(5) is that the FIND IT IN YELLOW campaign must inevitably have had an effect on public perceptions.

2. Subsequently, as I have said, the applicant launched the trade mark YELLOW in September 2006.  Mr Heerey’s written submissions pointed to the ways that this has been promoted:

   (a) "Home at Yellow" which is a website launched about July 2006 providing uses with in depth information relating to home renovations;

   (b) an updated YELLOW PAGES@ website, accessible through a new domain name since September 2006, which contains links to all electronic products such as "Home at Yellow", "Yellow Offers", "Yellow Mobile" and "Yellow in the Car";

   (c) "Yellow Mobile" which is an application launched in October 2006 allowing mobile phone users to browse the business directory online via their phone, including a map for the business chosen;

   (d) "Yellow Offers" and "Yellow Featured Offers" which are online tools on Telstra's Yellow website since September 2006, which allow advertisers to post special deals for consumers; and

   (e) "Yellow in the Car", which is a glove box sized printed directory first distributed in 2006 in Melbourne and Sydney, which is reduced in size and has a limited number of headings expected to be most relevant to car based shoppers.

3. While there is some validity in Mr Ricketson’s suggestion that YELLOW is a limping trade mark, I think that any defects that it has in that respect have been cured by the extent of usage.  Where the word YELLOW appears with (typically) the walking fingers device from late 2006 onward, the word YELLOW is prominent.  I cannot entirely agree with Mr Heerey that YELLOW acts as “the” key distinctive identifier of the products, as did the word GUYLIAN vis-à-vis the seahorse shape considered in Chocolaterie Guylian v Registrar of Trade Marks.  However, as he argued, the walking fingers device which often accompanies the word YELLOW would not be readily verbalized when used with YELLOW, with the result that customers would most likely understand and refer to the brand by the word YELLOW alone.  Indeed there would be no alternative in aural and oral contexts such as Telstra's radio commercials.  In that context, it would be unrealistic to suggest that the word YELLOW depended on the unpronounceable walking fingers logo to achieve status as a trade mark.

4. Mr Ricketson conceded that there had been use of YELLOW solus after September 2006.  He argued that, as a mere handful of instances in a quite large volume of documents, the usage was not commercially significant.  Its significance was further muted, he argued, by diluting YELLOW in slogans such as GO FURTHER WITH YELLOW, WELCOME TO THE WORLD OF YELLOW and so forth.  However, looking at the totality of the applicant’s evidence it would seem that the change to YELLOW was a fairly obvious theme in all the relevant material.  It is one thing to suggest that YELLOW might lose its identity in an advertisement with a theme like “Customers don’t come out of the blue, they come out of Yellow™”, but I think the reiterations and variations around the word YELLOW must have rammed home to consumers the fact that YELLOW PAGES had become just YELLOW.  It is harder to say if this was because of, or despite, the sometimes oblique, sometimes blatant references to YELLOW PAGES or the walking fingers logo, but I do not think that Mr Ricketson’s argument can stand against the tide of the applicant’s advertising.

5. This is not a case like Sports Warehouse, where an applicant, having adopted one trade mark but predominantly used another, seeks to register the first trade mark based on the usage of the second.  Here, prior to adopting YELLOW, the applicant had built up, over many years, an extensive reputation in its YELLOW PAGES trade mark, then subsequently managed a well-resourced transition. 

6. Mr Heerey, however, built too much of an inference on the structure on the trade mark YELLOW PAGES when he argued that its distinctive element was YELLOW.  It is true that the element “pages”, within the trade mark YELLOW PAGES, is not distinctive in respect of directories and of analogous services.  In this, Mr Heerey relied on the comments of Hearing Officer Zars in Telstra Corporation Ltd v Yellownet Corporation[9].  The hearing officer’s finding with respect to PAGES is obviously correct but her comment was made in the course of a comparison of YELLOW PAGES with YELLOWNET.  In my view, while her comment assists in that comparison it should not be made to serve any broader function.  Distinctiveness is ultimately a function of the perception of other honest traders, as Kitto J recognised in Michigan.  It seems fairly self-evident that perceptions cannot be accurately gauged by a simple process of subtracting non-distinctive elements from a distinctive whole.

   [9] (1999) 44 IPR 415 at 420.

7. Ultimately, I find myself agreeing with Mr Heerey as to the result of an inquiry under s 41(5). To conclude this aspect, if I approach the issue in terms of Austereo, supra, it seems to me that there is sufficient inherent adaptation within the sign YELLOW, augmented by the extent of use of YELLOW PAGES, to support the conclusion that, at the priority date in 2003 the trade mark YELLOW was capable of distinguishing.  The fact that the FIND IT IN YELLOW campaign which commenced in 2005 and the use of YELLOW from 2006 resulted in a smooth and effective reshaping[10] of the YELLOW PAGES trade mark tends to confirm that such a conclusion as to the facts at the priority date is appropriate. All in all, there is good support for an inference that, at the priority date, the public would have already appreciated that the word YELLOW, if used solus as a trade mark, was an indicator of commercial origin. Accordingly, the opponent has not established a ground of opposition under s 41.

   [10] The applicant’s evidence shows a number of media references to this as a “rebranding”.  I have avoided using that term as I am not sure how reliable these references are as a gauge of perception.  The examples given are suggestive but, as Mr Ricketson argued, they still leave open the possibility that the choice of words is simply journalistic reiteration of the applicant’s own press releases, rather than the “independent media perception” to which Mr Heerey referred.

   Section 44.

8. Section 44 of the Act relevantly provides:

   Identical 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).

9. The opponent relies on the following registrations, all of which have priority dates earlier than the application:

   828126  YELLOW BUS & Chinese Characters & Device (classes 9, 16, 35, 41, 42) [11]

   851034  THE YELLOW ENVELOPE (class 35)

   851576  YELLOW DUCK (class 35)

   872622  YELLOW ZONE (classes 38 and 41)

   [11] Trade mark registration 828126 has now been removed from the register for non-payment of the renewal fee.

10. Mr Heerey conceded that at least some of the goods and services specified in the application and the registrations on which the opponent relies were caught by either 44(1) or 44(2) as appropriate. The priority dates of the registrations meet the necessary stipulation. Mr Ricketson did not attempt to argue that the trade mark was substantially identical to the trade marks relied upon by the opponent. Therefore, to establish the s 44 ground of opposition to at least some extent the opponent must establish that the trade mark is “deceptively similar” to one or more of the trade marks on which it relied.

11. Having had the opportunity to consider the opponent’s written submissions before the hearing, I was able to indicate to Mr Ricketson that I did not regard the first three of the trade marks on which the opponent relied as being deceptively similar to YELLOW.  My reasons for doing so would very much coincide with those given by Hearing Officer Kirov in deciding the Khoury opposition.  Accordingly, rather than invent new ways of setting out the same reasoning, I will adopt, verbatim, Mr Kirov’s findings as regards those three registrations:

    The impression taken away from the trade marks on which (the opponent) 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 (the opponent) 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 (the opponent) relies are used in a normal and fair manner for the respective goods and services they cover.

12. This brings me to registration 872622, for the trade mark YELLOW ZONE (“the prior registration”).  The prior registration was not considered by Mr Kirov in the course of deciding the Khoury opposition as it was not something on which Mr Khoury relied. 

13. To give context to the comparison of trade marks under s 44(2) I note that the prior registration specifies the following services: “Radio and television broadcasting services (whether free to air or subscription)” in class 38 and, in class 41, “Radio entertainment and television entertainment; production of radio programmes; production of television programmes; arranging and conducting competitions, exhibitions, shows and balls; discotheque services; live performances”. Those are essentially the same as some of the services specified in the application, viz "communication services" in class 38 and "organising and staging sporting, cultural and entertainment events and competitions" in class 41.

14. At the hearing Mr Ricketson argued that the conflict was more extensive than this.  That is doubtless the case but the items that I have quoted above will suffice to show that, for the purposes of s 14, the services in the application are “similar” to those in the prior registration.  That finding, in turn, is enough to allow me to say that the only matter left to be determined is that of deceptive similarity.  Given my conclusion on that score, which I will now set out, it will not be necessary to chart the extent of any other similar services.

15. To put the matter briefly, I do not accept Mr Ricketson’s argument that the ideas behind YELLOW and YELLOW ZONE are the same, or even particularly similar, any more than the trade marks are aurally similar. I accept his proposition that comparing YELLOW ZONE with YELLOW is to compare two abstracts. It seems very likely that, as he also argued, in dealing with and comparing abstract concepts, the mind of the ordinary consumer will operate differently from the way it might approach the comparison of things that are more tangible. None the less, I see no basis on which the two would either be confused or assumed to be related. I draw some support for this conclusion from the way in which the applicant approached the transition from YELLOW PAGES to YELLOW, treating it as something needing extensive promotion to ensure that its customers got the message. Traders can be presumed to know their customer base and it is thus instructive to see that the applicant did not, with the weight of the YELLOW PAGES reputation to draw on, simply assume that its customers would readily infer that YELLOW, solus, was now to fill the shoes of the YELLOW PAGES trade mark. Rather, the applicant decided that an extensive advertising campaign was required to achieve that result. That being so, and in the lack of any evidence of confusion, to say that customers would be reasonably likely to expect a connection between services bearing the trade mark YELLOW and those bearing the trade mark YELLOW ZONE is, in my view, unjustified speculation. Such a low probability of confusion or mistake is simply not sufficient to trigger s 44[12], and this ground of opposition is not established.

    [12] As to this, the line of authority in Australia stretches back to Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 92 CLR 592 at 606. Mr Heerey noted the recent convenient summary in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354 at [95].

    Section 59

16. This provides

    The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a)  to use, or authorise the use of, the trade mark in Australia; or

    (b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

    in relation to the goods and/or services specified in the application.

17. Both counsel agreed that, on the basis of the decision of the Full Court of the Federal Court in Food Channel Network v Television Food Network GP [2010] FCAFC 58 at [74], the relevant date at which this provision is to be applied is the priority date. I accept that this is now the necessary approach, notwithstanding in particular the reservations of Dodds-Streeton J in Suyen, supra at [208] – [210].

18. Mr Ricketson seized on the apparent gap between the priority date and the time when a decision was made to investigate a possible need to modernize the YELLOW PAGES trade mark.  His argument has some merit, given the evidence of Mr Harvy.  Mr Harvy, who is now the Group General Manager of Sensis, was formerly the Group Marketing Manager for that company.  Thus, between 2002 and 2005 he was directly responsible for the product management of YELLOW PAGES.  He declares to the slowing growth of sales of the hard copy YELLOW PAGES directory, and the rising interest that consumers were expressing for online services, and:

    Consequently, in about mid 2005, two of Sensis’ employees who reported to me (the Consumer and Marketing Manager and the Head of Marketing Services) began to explore ways which would ensure that Telstra’s YELLOW PAGES products would remain competitive in the market.

19. External consultants were then appointed to conduct market research.  In July of 2005 the consultants recommended “that in order to change consumers’ perception of the online directory the product needed re-branding”.  Mr Harvey and his “marketing team” thereupon considered “whether Telstra’s directory product should continue to be marketed under the YELLOW PAGES trade marks or whether the image should be refreshed, or a new image created altogether”.  It is more than a little curious that, by then, the opposed application had already been on file at the Trade Marks Office for two years.

20. Mr Heerey was unable to point to any evidence about the filing of the opposed application.  Despite the further evidence which the opponent has brought in, the identity of the person who authorized the filing, and the basis on which they did so, remain a mystery to me.  Mr Heerey argued, instead, that the filing must have been attended by an intention to use the word YELLOW as a trade mark because, otherwise, the applicant was not likely to have contested the opposition.  This was a bravely-put argument, if perhaps also self-serving.

21. Aston v Harlee[13] is long-standing authority for the proposition that the filing of an application is prima facie evidence of an intention to use.  I would be more than ready to draw an inference against the applicant in this case except for two obtrusive facts.  Firstly, the filing of the application was on the face of it authorized by the applicant, Telstra, and not by Sensis.  It might be assumed that a declarant with Mr Harvy’s explicit claim to be privy to the affairs of Telstra as well as Sensis would know of the circumstances that attended the filing.  However, Mr Harvy’s statements as above also fail to acknowledge the FIND IT IN YELLOW campaign, which commenced in February, 2005 – in other words, before Mr Harvy even began to speculate on any need to update or change the brand.  All in all, I think it is safer to accept that there may be either simple gaps in Mr Harvy’s knowledge, or innocent gaps in the account that he has seen fit to set out, than to assume that questionable motives gave rise to the filing of the opposed application.  Such motives are easy to envisage, of course.  It would be open to me to infer that the filing was motivated by simple tactical or forensic concerns.  These would centre on the applicant’s seeking to gain what might be crudely called additional leverage against competitors who had by then demonstrably used either the word “yellow” or the colour yellow in a number of ways and contexts.  It might then be open to me to infer that the intention to use, absent at filing, came later.  But in this instance I do not think that there is quite enough justification for such an exercise and I decline to draw any adverse inference(s).

    [13] (1960) 103 CLR 391 at 401. It might also be fair to observe that the breadth of the statement of goods and services in the current matter is not on all fours with Aston and that reg 4.8(3) could arguably have been applied by the examiner of trade marks.  Now, at the end of the opposition process, is not the time to revisit that decision.

1. Accordingly, the opponent has not established a ground of opposition under section 59.

   Conclusion and costs

2. The opponent has not established a ground of opposition.  The trade mark application may, subject also to the determination of the Khoury opposition, proceed to registration after one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is discontinued or the court makes relevant orders.

3. The applicant is entitled to its costs in accord with the scale in the regulations.  I award costs against the opponent.

   T. E. Williams
   Hearing Officer
   19 April 2011