Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd

This matter concerned an application for registration of a trade mark by Telstra Corporation Limited (the Applicant) and an opposition by Phone Directories Company Australia Pty Ltd (the Opponent). The dispute centred on whether the Applicant's proposed trade mark, which included the word "local", should be registered. The decision was made by Michael Kirov.

The court was required to determine whether the Applicant's trade mark was registrable, particularly in light of objections raised under section 41(5)(a)(ii) of the relevant Act. This involved assessing whether the Applicant had demonstrated use of the trade mark per se as a trade mark, rather than merely as a descriptive term, and whether registration would unfairly restrict other traders' use of the word "local".

The court reasoned that while the Applicant was not seeking a monopoly in the word "local" itself, but rather in the trade mark as a whole, the evidence of use was insufficient. The court agreed with the Opponent's submission that the Applicant's evidence largely demonstrated the use of "local" in descriptive phrases or as part of broader branding, rather than as a trade mark in isolation. A single example of use of the trade mark per se was identified, but even in that instance, the court noted that the mark appeared at the bottom of a page where other branding elements were present at the top, potentially giving it descriptive meaning within that context. The court acknowledged that registration would not grant exclusive use of the word "local" per se, but the primary issue was the lack of evidence of use of the trade mark as applied for in a manner that established its distinctiveness as a trade mark.