Telstra Corporation Limited v Robert George Coles

[2004] ATMO 16

TRADE MARKS ACT 1995

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

Re:Opposition by Telstra Corporation Limited to registration of trade mark application 851576 (35) - YELLOW DUCK - filed in the name of Robert George Coles.

Delegate:	Mary Skivington.
Representation:	Opponent: Ben Fitzpatrick, of Counsel, instructed by Mallesons Stephen Jacques, lawyers. Applicant: Robert George Coles, the applicant, represented himself.
Decision:	Section 52 opposition - grounds of opposition under sections 44 and 60 not established - registration allowed - costs awarded against the unsuccessful opponent.

Background

1. Robert George Coles, 'the applicant', filed trade mark application number 851576 to register the trade mark YELLOW DUCK, on 26 September 2000. The services specified in the application are:

   Provision of information directory services on-line from a computer database or via the Internet.

2. Acceptance of the application was advertised in the Australian Official Journal of Trade Marks on 13 September 2001.

3. Telstra Corporation Limited, ('the opponent'), was granted a three months extension of time within which to file a notice of opposition and subsequently filed its notice of opposition to registration of the trade mark, on 13 March 2002. The opponent listed a broad range of grounds of opposition under the provisions of sections 41, 42, 43, 44, 58, 59, 60 and 62 of the Trade Marks Act 1995, ('the Act'). In terms of section 44 of the Act the opponent cited sixteen registered trade marks including YELLOW PAGES, YELLOWMANIA and HELLO YELLOW.

4. The opponent requested and was granted a three months extension of time to 13 September 2002 within which to file and serve its evidence in support. On 1 October 2002 the opponent filed a late application for another extension of time to file and serve its evidence. The reasons given in the statutory declaration that accompanied the request failed to explain the circumstances that led to the application being late and as a consequence the application was refused. The applicant completed the filing and serving of his evidence in answer by 18 February 2002 and the evidentiary phases of the opposition process were completed with the filing and serving of the evidence in reply, on 18 August 2003.

5. Both parties applied to be heard and as a delegate of the Registrar of Trade Marks, I heard the matter on 29 January 2004. The opponent was represented by Mr Ben Fitzpatrick, of Counsel, instructed by Mallesons Stephen Jacques, lawyers. The applicant appeared on his own behalf.

   The evidence

   Evidence in answer

6. The evidence in answer comprises a statutory declaration made by the applicant, Robert George Coles, in which he declares that he chose the trade mark YELLOW DUCK to reflect the 'mascot' he intends using in the marketing of his services. He chose a duck because these creatures have webbed feet and his services are intended to be provided via the world wide web and the colour yellow because that is the colour commonly used in the depiction of ducks in 'drawings, comics, toys and caricatures.'

   Evidence in reply

7. The evidence in reply consists of a statutory declaration with Exhibits LS-1 to LS-10, made by Lucinda Kate Sedgwick, who declares that she is employed as an intellectual property lawyer with Sensis Pty Ltd, ('Sensis'). Ms Sedgwick reports that this body is a wholly owned subsidiary of the opponent. She declares that the applicant's services are the same or similar to those provided by Sensis, on behalf of the opponent and, in relation to these services, the opponent wishes to have exclusive rights to trade marks containing the word YELLOW. Ms Sedgwick concedes that toy ducks are often yellow in colour. However, she says, the word YELLOW 'is not necessarily synonymous with ducks'.  The applicant could have selected the name of any colour or any other word to combine with DUCK declares Ms Sedgwick. Mr Coles' choice of the word YELLOW, she declares, will cause consumers to associate the mark with the opponent. Ms Sedgwick avers that the word YELLOW, is the element common to the opponent's well known trade marks and in relation to directory services, use by another of a trade mark containing the word YELLOW will potentially undermine the opponent's rights in the word.

   Grounds of opposition

8. At the hearing the opponent pressed two grounds of opposition, the first being under the provisions of section 44 of the Act, on the basis of the opponent's earlier registration of the trade mark, YELLOW PAGES. The second ground of opposition relied upon, falls under the provisions of section 60 of the Act.

   Submissions and the law

   Section 44

9. So far as it concerns this application, section 44 of the Act provides that a trade mark application must be rejected if the applied for trade mark is substantially identical with or deceptively similar to a trade mark which has an earlier priority date, and which is in respect of similar services or closely related goods.

10. Section 10 of the Act states that a deceptively similar trade mark is one that so nearly resembles another trade mark that it is likely to deceive or cause confusion.

11. The opponent is the owner of numerous registrations with earlier priority dates than that of the subject application, for the words YELLOW PAGES, alone or in combination with other material. The opponent's services under its YELLOW PAGES trade marks include directory services so it cannot be disputed that the services are the same. It was not argued that the trade marks are substantially identical. It remains for me to determine if the trade mark, YELLOW DUCK, is deceptively similar to the trade mark, YELLOW PAGES.

12. Mr Fitzpatrick submitted that the trade marks are deceptively similar. In support of his arguments he referred to the established principles laid down in cases such as Shell Co of Australia v Esso Standard Oil, (1961) 109 CLR 407 at 415, De Cordova v Vick Chemical Co, (1951) 68 RPC 103 at 106, Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, Seven-Up Co v Bubble Up Co.Inc, (1987) 9 IPR 259, Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, Jafferjee v Scarlett, (1937) 57 CLR 115 at 121-2 and Polaroid Corp. v Sole Pty Ltd, [1981] 1 NSWLR 491 at 497-498.

13. Mr Fitzpatrick argued that the first and more prominent part of each of the respective trade marks is the word YELLOW, a word, he said, that does not describe the character or quality of directory services or telecommunication services. He noted that for the purposes of assessing the likelihood of confusion the first part of a mark is the most important as was established in London Lubricants Appn. (1925) 42RPC 264 and confirmed in Condnaste Publications Pty Ltd v Virginia Taylor [1998] 864 FCA where it was found that VOGUE and EUROVOGUE are not deceptively similar. Mr Fitzpatrick noted that in Yellownet Corporation vTelstra Corporation Limited [1999] ATMO 10 (29 January 1999), where the marks under consideration were YELLOW PAGES and YELLOWNET , the Registrar's delegate said,

    Visually and aurally, the marks share the first identical word "yellow", which serves as the essential feature in the marks, given that the conjoined word "net" in the applicant's mark in relation to the specified services would be seen to be as the nowadays commonly used and widely recognised abbreviated form for "Internet" - thus describing the applicant's services as being provided on the Internet. The word "pages" would be regarded as a non-distinctive word for goods of the opponent's registration 545667, or the services relating to advertising of the "Yellow Pages" directories covered by registrations 387413 and 545668. In the absence of any other distinctive elements in the marks, it is likely to be the word "yellow" which would leave an impression on the minds of the persons involved and become a tool for remembering the marks in question.

14. In that case, each of the trade marks was composed entirely of elements, which individually have little inherent adaptation to distinguish. Lacking any other elements that could be described as distinctive the delegate found that it was likely that the word YELLOW would be the memorable feature of the trade marks. The situation here is different in that the comparison is between one trade mark, composed entirely of elements which individually and in combination possess little inherent adaptation to distinguish, but which through long and extensive use has become distinctive and another trade mark which combines a word with minimal adaptation to distinguish with a distinctive word, to create a trade mark that as a whole, is inherently adapted to distinguish.

15. Mr Coles submitted that whether or not the marks are deceptively similar should be determined on the basis of the 'complete image'. He noted that the opponent's marks combine the word YELLOW with the word PAGES and the comparison is therefore between YELLOW PAGES and YELLOW DUCK. He argued that the word YELLOW is descriptive and that it is not unusual for trade marks with a common descriptive element to co-exist on the Register.

16. Mr Fitzpatrick argued that the existence of a family of marks containing a common element is also relevant to the assessment of deceptive similarity. He said that support for this argument may be found in Semigres Trade Mark, [1979] RPC 330 at 339, Beck & Koller & Co (England) Ltd, (1947) 64 RPC 76 at 82 and in the more recent  Macri Fruit Distributors Pty Ltd's Application (Opposition by McDonald's Corporation), (2000) AIPC 91-583, where the applied for trade marks were 'McSALAD' and 'McFRESH' and the opponent had numerous trade marks for words with the 'Mc' prefix followed by the name of a food or a food related descriptive term. Mr Fitzpatrick asserted that the opponent has a family of YELLOW trade marks and in the light of this family of trade marks YELLOW DUCK is deceptively similar to YELLOW PAGES.

17. I do not agree with Mr Fitzpatrick. While the opponent may have a preference for trade marks that contain the descriptive word YELLOW, this is insufficient to establish that such trade marks form a family of trade marks. There must be other elements that link the marks. The primary meaning of the word YELLOW, as given in the Macquarie Dictionary, is that it is 'a bright colour like that of butter, lemons, etc.; between green and orange in the spectrum'. The opponent's services are provided by means of directories printed on yellow paper or via the Internet on yellow coloured backgrounds so the word YELLOW is descriptive of a characteristic of the goods by which its services are provided.  Where a descriptive word, such as the name of a colour, is used, other traders in the normal conduct of their trade are also likely to need to use it, so that a trader will have difficulty in establishing that this word alone  can work as the basis of a family of trade marks. I have been presented with no evidence that consumers associate the word YELLOW alone, with the opponent in relation to the services it provides. I regard this proposition as improbable and in the absence of persuasive supporting evidence it must remain in the realm of conjecture.

18. On the other hand, I think it is common knowledge that the expression YELLOW PAGES has become synonymous with the opponent's services. The opponent is the owner of nineteen registered trade marks that contain the words YELLOW PAGES alone, or in combination with various devices, most notably, perhaps, the 'walking fingers', or with other generally descriptive words such as 'talking', and 'electronic'. It seems to me that these clearly show the existence of a family of YELLOW PAGES trade marks rather than a family of YELLOW trade marks. The opponent also has registrations for YELLOWMANIA and 'HELLO YELLOW'. However, visually, phonetically and contextually, there is nothing of substance in these trade marks to connect them with the YELLOW PAGES family or with each other.

19. The expression YELLOW DUCK, as a whole, immediately brings to mind a picture of a yellow, web-footed bird with the ability to swim. Clearly each of the words that comprise the trade mark, when used singly or in combination with other words will create vastly different ideas, but in combination the idea created by the words YELLOW and DUCK is plain. DUCK and PAGES have no nexus of similarity in meaning, appearance or sound. YELLOW PAGES and YELLOW DUCK do not look alike or sound alike and do not convey similar ideas.

    French J in Registrar of Trade Marks v Woolworths, 45 IPR 411 at 426 said:

    The position now is that the registrar and the court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

    And at 428:

    ..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. It is enough if the ordinary person entertains a reasonable doubt.'

20. I am not satisfied that there is any likelihood of consumers wondering if YELLOW DUCK directory services come from the same source as YELLOW PAGES directory services. These trade marks are not deceptively similar and I find that the section 44 ground of opposition has not been established.

    Section 60

21. Section 60 of the Act provides that the opponent must establish that the applied for trade mark is substantially identical with or deceptively similar to another trade mark that has acquired a reputation in Australia before the priority date of the applied for trade mark and, because of that reputation, use by the applicant of its trade mark, would be likely to deceive or cause confusion.

22. The minimum requirement for section 60 of the Act is that the trade marks must be deceptively similar. I have already found that the trade marks are not deceptively similar. Accordingly, the opponent has not established this ground of opposition.

    Decision

23. The opponent has not succeeded in establishing  the grounds of opposition upon which it relied.  Accordingly I direct that the trade mark application may proceed to registration 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 the appeal has been decided or discontinued.

    Costs

24. The applicant has sought and is entitled to its costs in this matter. I award costs, according to the official scale, against the unsuccessful opponent, Telstra Corporation Limited.

    Mary Skivington
    Hearing Officer
    Trade Marks Hearings
    30 March 2004