Telstra Corporation Limited v Robert George Coles

Telstra Corporation Limited, the opponent, sought to oppose the registration of the trade mark YELLOW DUCK, applied for by Robert George Coles, the applicant. The dispute concerned whether the applied-for mark should be registered, with Telstra arguing it was too similar to its own earlier registered trade marks. The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the trade mark YELLOW DUCK was substantially identical with or deceptively similar to Telstra's earlier registered trade mark YELLOW PAGES, pursuant to section 44 of the relevant Act, and whether the applied-for mark was deceptively similar to Telstra's trade marks for the purposes of section 60 of the Act. The delegate was required to determine if the use of YELLOW DUCK in relation to directory services would be likely to deceive or cause confusion among consumers, given Telstra's prior use and registration of YELLOW PAGES for similar services.

In relation to section 44, the delegate considered the definition of deceptively similar, which requires a mark to so nearly resemble another as to be likely to deceive or cause confusion. While acknowledging that the services were the same and that the trade marks were not substantially identical, the delegate found that YELLOW DUCK was not deceptively similar to YELLOW PAGES. This conclusion was based on the distinctiveness of the word "DUCK" compared to "PAGES" and the fact that while yellow is commonly associated with ducks, the word "yellow" itself is not necessarily synonymous with ducks. As the delegate found no deceptive similarity for the purposes of section 44, the ground of opposition under section 60, which also required deceptive similarity, could not be established.

Consequently, the delegate directed that the trade mark application for YELLOW DUCK may proceed to registration, subject to any appeal. The delegate also awarded costs against the unsuccessful opponent, Telstra Corporation Limited.