The Australian Telecommunications Commission v Business Marketing Australia Pty Ltd

[1994] ATMO 10

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by BUSINESS MARKETING AUSTRALIA PTY LTD to the registration of Trade Mark application number A387413 in the name of THE AUSTRALIAN TELECOMMUNICATIONS COMMISSION

Trade mark application 387413, in the name of THE AUSTRALIAN TELECOMMUNICATIONS COMMISSION (the applicant) of Communications House, 199 William Street, Melbourne, for registration of the device of stylised walking fingers over an open book with the words 'yellow pages' (see below) was lodged on 14 February 1983.   The services covered by the application were amended to 'Advertising services relating to the provision and promotion of telephone directories and telephone directory business supplements of all kinds (including directories and business supplements provided to users in tangible or intangible form and those held in magnetic, electronic, electro-optic or other media) including, 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; advertising survey services, including telephonic and electronic surveys, relating to telephone directories and telephone directory business supplements; and co-operative advertising with those who advertise in telephone and telephone directory business supplements'.   Acceptance of the application, under the provisions of sub section 24(2), was advertised in the Official Journal of 5 December 1991.

As provided by s.49 of the Trade Marks Act, 4 March 1992 opposition to registration of the application was lodged by BUSINESS MARKETING AUSTRALIA PTY LTD (the opponent) of 2 Bay Street, Port Melbourne.   Service of all the evidence to the opposition matter, provided for by Regulations 43, 44 and 45, was completed on 2 April 1993.   The opponent's evidence in support and reply consists of two statutory declarations (one with exhibits) of Douglas McKay, a director of the opponent, and one statutory declaration with exhibits of Darryl Burnett Mischlewski, managing partner of Watermark Patent & Trade Mark Attorneys.   The applicant's evidence in answer consists of declarations with annexures from the following 22 persons

Norman Rose, State Manager for Pacific Access Australian Pty Ltd (Yellow Pages Australia) in Queensland

Roy Richard Stoneman, Stoneman's Garden Centre of Glenorchy, Tasmania

Kathy Payne, Regional Manager for Pacific Access Pty Ltd (Yellow Pages Australia)

Suzanne Marie Towsey of 3 Derwent Street, Bayswater, Victoria

Susannah Paine, National Accounts Manager, Pacific Access Pty Ltd (Yellow Pages Australia)

Lewin Ronald Bell, General Manager, Compressor Hire Services Pty Ltd, Brisbane

Gavan Burn, Victorian ;Manager of NEWSPOLL Market Research, St Kilda

William Burlace, Manager Marketing Communications, Pacific Access Pty Ltd (Yellow Pages Australia)

Ann Hester Dufty, partner, Mallesons Stephen Jaques, Solicitors

Terrence Joseph McNamara, Advertising Manager of EKW Group of Wreckers, Victoria

Alan Stewart McFarlane, owner, Kelmac Fencing and Gates, Burleigh Heads

Helen Julie Kubenk, Director, Advance Removals & Storage Pty Ltd, Salisbury South, SA

Eleanor Kitchen, Advertising Executive, Foote Cone and Belding Pty Ltd, Sydney

Peter James Hill, manager, Pete's Golf Connection, Fyshwick, ACT

Joan Hegedus, managing director, Computer Shark, South Yarra, Victoria

George William Hastings, managing director, Ogilvy and Munro, Surry Hills, NSW

Graham Roland Guthrie, manager, Modern Home Improvers, Greenwood, WA

Ian Richard Gibb, director, Cady Nominees Pty Ltd, Victoria Park, WA

Geoffrey John Barkla, General Manager, National Directory Services, the Business Unit of Telecom responsible for publishing various Telecom Directories

Donald Ewers, Manager Sales Support, Pacific Access Pty Ltd (Yellow Pages Australia)

Russell Medhurst, Manager, Structure and Standards, Marketing Department, Pacific Access Pty Ltd (Yellow Pages Australia)

Geoffrey Neil Swanson, Director, George Patterson Advertising, Melbourne

Following the opponent's request, under Regulation 49(1)(b), I heard the matter in Melbourne on 17 September 1993.   The opponent was represented by Mr Darryl Mischlewski and Ms Lynn Stafford, both Patent Attorneys of Watermark, Melbourne and the applicant by Dr John Emmerson, QC, and Mr Adrian Ryan of Counsel, instructed by Ms Ann Dufty, solicitor of Mallesons Stephen Jaques.

The evidence and submissions
Mr Mischlewski advised that the opponent's arguments would be directed to the words YELLOW PAGES being a generic term used to describe the services of the application, and, therefore, I should require that the words be disclaimed in this trade mark.   He noted that in registration A327524, where the mark is identical to this application, and which specifies advertising services, the words YELLOW PAGES are disclaimed.   It was his submission that nothing had changed in the four years between the registration date of A327524 and the date claimed by this application.  

Mr Mischlewski took me to the cases where a proprietor's monopoly in a product led to the situation where the word used on that product became its name and, so, it was  incapable of registration. (Siegert v Findlater (1878) 7 Ch. D. 801 ('Angostura Bitters'); Linoleum Manufacturing Co v Nairn (1878) 7 Ch. D 834 ('Linoleum'); Shredded Wheat Co Ltd v Kellogg Co (G.B.) (1940) 57 RPC 137 ('Shredded Wheat'); Portagram Radio Electrical Company Limited's Appn. (1952) 69 RPC 241 ('Portagram'); James A Jobling Co Ltd v James McEwan & Co Pty Ltd [1933] V.L.R. 168 ('Pyrex'); Elliott Optical Company Limited's Appn. (1952) 69 RPC 169 ('Synoptophore'); New York Yacht Club's Appn (1987) AIPC 90-399 ('America's Cup'); Burberrys v J.C. Cording & Co Ltd (1909) 26 RPC 693 ('Slip-on')). Mr Mischlewski submitted that the evidence demonstrates generic use of the words YELLOW PAGES which should be considered in the light of these cases and pointed me to examples in

William Burlace's declaration - Annexure 'A' being a booklet to accompany a video prepared for English language teaching on SBS Television;

Donald Ewers's declaration - Annexure 'C', a 1992 Telecom customer information booklet where YELLOW PAGES is referred to as 'directional media', and
Annexure 'D', containing brochures for use by sales representatives to provide information to advertisers and prospective advertisers, entitled 'How the telephone can ring up more sales' and 'How you can win MORE customers for LESS cost'

Douglas McKay's first declaration - paragraphs 31 and 32, which discuss the use of YELLOW PAGES as the name of the type of directory and associated services, and
Exhibit DM9, which contains examples of the word 'TELECOM' preceding or combined with YELLOW PAGES

Geoffrey Barkla's declaration - paragraph 16, which discusses the use of YELLOW PAGES in the first year of its release, and
paragraph 40, where it is stated that Telecom and its authorised selling contractors continuously refer to the advertising services as "Yellow Pages" advertising

Russell Medhurst's declaration - paragraph 52 of which states that he uses 'the "Yellow Pages" trade mark to identify the services which we provide to Advertisers'.  

In his submission, these examples of the use of the words YELLOW PAGES,  demonstrate generic use and not trade mark use.   Mr Mischlewski said that when a trader has a monopoly, as the applicant has in domestic telephone services, he does not have to think about what he will call his product.   It was his submission that, in this mark, the 'Walking fingers' device is the trade mark and YELLOW PAGES is the product so that the words are generic and require a disclaimer to allow the mark to registration.

For the applicant, Dr Emmerson submitted that the words YELLOW PAGES have been associated with the applicant's directories since they were first introduced under the trade mark, and usage has been consistently proper trade mark usage throughout that time. If the words had become generic through use, he said, they would have to mean any type of business directory, not just the one produced by the applicant. It would also mean that they had become generic of that class of advertising services. In discussing the registrability of the words in their ordinary meaning, Dr Emmerson submitted that, as they do not have any direct reference to advertising services, they are registrable under s.24(1)(d) of the Trade Marks Act. Any secondary meaning they have taken on, he said, is to the advertising service provided by Telecom and if this is so then the words are distinctive of Telecom's advertising services and so registrable under s.24(1)(e). It was his further submission that the opponent must show that they have developed a secondary meaning which is 'directory advertising services' and to establish this would require very powerful evidence. The opponent's directory advertising services are identified by the words MELBOURNE BIG, he said. Dr Emmerson noted a contrast between the terms used to discuss the applicant's goods or services in Mr McKay's declaration, where the term 'yellow pages' or 'a yellow pages' is always used, and in an exhibit to that declaration, Exhibit DM 13, being brochures produced by the opponent, where the applicant's services are described as 'Telecom's directory product'. Further, he said, the opponent's own product is variously described in this exhibit as a 'Buying Guide', 'business information guide' and 'directory advertising'. Therefore, in its own brochures, Dr Emmerson submitted, the opponent makes natural use of the language in contrast to the stilted use in Mr McKay's declaration. The applicant's use of its mark has been widespread and it has developed a very large service industry, he said. In addition, he put to me, the applicant has been diligent in protecting its trade mark and has not allowed it to become generic through inaction.

In his submissions on the case law to which Mr Mischlewski had referred, Dr Emmerson noted the cases fell into two categories - the Linoleum supra type case where the word was the only one available and Shredded Wheatsupra type case where the mark has direct reference to the goods.   It was his view that the first set of cases can be distinguished, because telephone and business directories were published before the applicant adopted the trade mark so it had not developed a new product.   The second set of cases do not apply, he said, as this mark has no direct reference to the services - the usage is trade mark usage and the words are always used with initial capitals to identify the applicant's goods or services.   All these cases, he further submitted, can be distinguished on their facts.

Turning to the evidence, Dr Emmerson returned to Annexure C to Mr Ewers' declaration to which Mr Mischlewski had referred.   He maintained that the use of the words YELLOW PAGES did not encourage advertising in any Yellow Pages but in the Telecom product.   He maintained that, throughout the evidence, usage is always in a particular context - that is in the Telecom context.

Dr Emmerson referred to the opponent's evidence on use of the words YELLOW PAGES overseas and also the dictionary listings which were included in Mr McKay's first declaration.    On the matter of first use of the mark in Australia, he referred to Seven Up Co v O.T. Ltd (1947) 75 CLR 203 and submitted that this evidence was irrelevant. He reiterated that the applicant's use has been trade mark use and that it has always protected its mark. In respect of the various dictionary listings, he pointed to Annexure "K" to Mr Barkla's declaration which addressed this issue. Copies of letters from the applicant to the publishers of various dictionaries and responses to those letters were included in this evidence. He noted that this correspondence confirms that, in current and new editions of the Collins, Oxford and Macquarie dictionaries, the words YELLOW PAGES are to be identified as a trade mark.
Dr Emmerson then turned to Mr Mischlewski's declaration and its exhibits, which provide information on a survey conducted by Mr Mischlewski and two colleagues relating to TELECOM YELLOW PAGES and MELBOURNE BIG YELLOW PAGES.   Referring me to Arnott's Ltd and Others v Trade Practices Commission, 97 ALR 555 and State Government Insurance Corporation and Another v Government Insurance Office of New South Wales and Others 21 IPR 65, he submitted that this evidence broke practically every rule in respect of survey evidence. He then referred me to paragraph 45 of Mr McKay's first declaration, where Mr McKay discussed what 'Melbourne Big' users had been saying about some confusion between advertisements in Telecom's product and the opponent's product. This, he submitted, was hearsay evidence reported at two removes.

Responding to Dr Emmerson's submissions, Mr Mischlewski put to me that the point at issue is 'what is the name of the product if it isn't yellow pages?'.   He suggested that it is not just a directory service but a particular type of directory service and it is much easier to describe it as 'yellow pages' than 'telephone business directory service' or 'telephone buying guide directory'.   This being so, he submitted, all other competitors should be able to use the term for their similar goods and services.   He repeated that the monopoly situation which Telecom has, had allowed it to prevent others from using the words to describe their similar services.   Advertising for 'Melbourne Big' is sold only in Melbourne which is insufficient to make a dent in the market share held by Telecom throughout Australia.   The Angostura Bitters case supra, he reminded me, was one in which a monopoly was present, not a patented article.   In this regard I was referred to the Court of Appeal decision in Williams's Ltd Application (1917) 34 RPC 197 ('Chocaroons'). Mr Mischlewski suggested to me that the applicant's rights are protected by the Trade Practices Act against the deceptive behaviour of other traders. An example might be, he said, where the words YELLOW PAGES were used without the accompaniment of a well-known trade mark to clearly indicate that the use was generic. Following from the Singer line of cases (Singer Manufacturing Co v Wilson (1877) 3 App. Cas. 376, Singer Manufacturing Co v Loog (1882) 8 App. Cas. 15 and Singer Manufacturing Co v British Empire Manufacturing Co Ltd (1903) 20 RPC 313), he said, an action of passing off might be successful if deceptive use is shown. Referring back to the Gramophone case supra Mr Mischlewski reiterated that each product produced by the applicant in that case bore a registered trade mark as well as the word 'Gramophone'.   He suggested that this is the case here and submitted that the evidence shows that Telecom's registered trade marks are used in conjunction with YELLOW PAGES.

In respect of the evidence on foreign use, he advised that its relevance was that it demonstrated the factual position in the United States where no monopoly telephone situation exists.   In such circumstances, the phrase YELLOW PAGES is generic but where there is a monopoly the question will depend on usage.   On the matter of the survey evidence, Mr Mischlewski submitted the evidence is admissible but that the matter was one of weight.   The applicant has the onus of showing that no disclaimer is required and, in his submission, the evidence  has not demonstrated this.   He submitted that the case law to which he had referred, and the manner of use of the mark, coupled with the fact that any correct usage which is found is after the date of the application, is sufficient for me to require a disclaimer of the words YELLOW PAGES for these services.

Dr Emmerson responded by submitting that, in Australia, factual distinctiveness relates to the organisation Telecom.    The matter is therefore wholly different, he said, to the situation in Clark Equipment Co. v Registrar of Trade Marks (1964) 111 CLR 511 ('Michigan'), for the words YELLOW PAGES have such a strong natural primary meaning of yellow pieces of paper, that they can have no direct reference to the service of directory advertising. Any secondary meaning ascribed to YELLOW PAGES as being a form of directory advertising, he submitted, can only be in respect of Telecom's use of the expression as a trade mark. In reiterating that the opponent has shown it is perfectly possible to use 'directory advertising' for what it does, Dr Emmerson submitted that if this had not been so, the opponent might well have been able to use the words in dispute. Referring to use before 1983, Dr Emmerson noted that both parties agree that usage of YELLOW PAGES has always been consistent. Use has continued since then and the applicant's reputation in the mark has strengthened but, he claimed, it does not matter when factual distinctiveness developed, as the mark at all times has been registrable under s.24(1)(d) or s.24(1)(e) of the Trade Marks Act.   Referring to the disclaimer requested and agreed to in 1979, Dr Emmerson reminded me that it is not unknown for registration of a trade mark to be not pursued as strongly as it might have been, but this does not mean that it would not have been possible to argue the disclaimer requirement at the time.   Between 1979 and 1983 a large amount of use was made of the trade mark and now, ten years later, the trade mark is of great importance to the applicant and it should be allowed to registration without disclaimer.

Discussion
As noted this application was accepted on the basis of supply of evidence under the provisions of sub section 24(2).   An examiner of trade marks had required a disclaimer of the words YELLOW PAGES based on the dictionary references which have been referred to by both parties.   Examples found in the usual volumes consulted by examiners of trade marks were

1. Macquarie Dictionary  yellow pages n.pl. (sometimes construed as sing.) a telephone directory listing businesses, professional people, organisations, etc.

2. Concise Oxford Dictionary  yellow pages n. section of telephone directory on yellow paper and listing business subscribers according to goods or services they offer

The examiner therefore maintained that the words had direct reference to the services as being advertising services for telephone directories.   Evidence of use was provided and the objection was withdrawn for the services as listed above.   As noted in Michigan supra, evidence of distinctiveness in fact cannot, of its own, allow registration of a trade mark as the provisions of both paragraphs of ss26(2) must be met.   Subsection 26(2) reads as follows

In determining whether a trade mark is distinctive, regard may be had to the extent to which-

(a) the trade mark is inherently adapted so to distinguish; and

(b) by reason of the use of the trade mark or of any other circumstances, the trade mark does so distinguish.

In my consideration of the evidence provided to support the opponent's position, and in response by the applicant, and also of the submissions made by both parties I consider both legs of ss.26(2) are met.   From the evidence I note that the applicant's goods are produced on yellow paper and this colour was adopted 1975.   The change is referred to in Mr McKay's declaration at paras 27 and 29, and also in a Telecom Australia brochure published in 1980 at Exhibit DM8.   A directory of business telephone numbers had been produced on pink paper since 1926, but because of a shortage of this coloured paper and pollution problems associated with its production, the colour was changed from pink to yellow.   Both sources report that yellow is the internationally recognised colour for classified directories.   Mr McKay states that 'Telecom introduced a new type of telephone directory into Australia with yellow pages and named that new type of directory "YELLOW PAGES"'.   The Telecom brochure discussed the introduction of the new directory as being in two parts - one of them being a buying guide.   I notice from my viewing of examples of television advertising from 1979 to 1990 (Annexure A to Mr Swanson's declaration) that this phrase ('buying guide') was used consistently when referring to the applicant's product.   On many covers of the directory produced between 1978 and 1991, which were included in the evidence from both parties, the phrases 'Buyers Guide', 'Buying Guide' and 'Guide to products and services' recur.   So then, I think, it is correct to describe the goods produced as 'a buyers' guide produced on yellow pages'.  

Both Mr Mischlewski and Dr Emmerson used the word 'directory' in their submissions and I will also use it.   The services specified in this application are not for the compilation of a directory but cover the advertising services for advertisements included in the directory.   The advertisements are clearly additional to any listing of business telephone numbers and cannot be specifically identified as 'a telephone buying guide' which was what Mr Mischlewski was urging me to consider.   They include art work, information about the advertiser, the services, the address, the facsimile number as well as the telephone number.   A great deal of information has been provided by the applicant on its methods of selling advertising and it appears to have developed a sophisticated service for its advertisers.   The use of telephone recording data is a feature of its recordal of incoming calls so that advertisers can measure the benefits which advertising in the YELLOW PAGES directory has brought.   Similar methods for measurement of advertising success are used by the opponent to provide feedback to MELBOURNE BIG directory customers.

I have considered the cases to which Mr Mischlewski referred me.   I believe that they can be distinguished from this matter.   As noted above, I do not believe that the advertising services covered by this application are new and specific to a particular genre of advertising which would, of course, mean that the words YELLOW PAGES would be required by anyone compiling a similar directory.   I agree with Dr Emmerson that directory advertising or, more particularly, business directory advertising is a normal, and available, description of these services.   I also do not believe that the words have direct reference to these services.   The direct reference would be 'directory advertising', 'business directory advertising' or 'buying guide advertising', and these would be generic and therefore not registrable as trade marks..

Turning to the question raised as to the admissibility of the survey evidence covered by Mr Mischlewski's declaration, I agree with Mr Mischlewski that the evidence may be admitted and that the weight accorded to it is a matter for the Registrar.   It is not clear to me just what was presented to the respondents in respect of Question A (What is the product name of these two products?)   In his declaration at para 8, Mr Mischlewski states that he and his colleagues presented a 'Telecom Yellow Pages' and a 'Melbourne Big Yellow Pages' and asked the question.   No evidence was presented to show that MELBOURNE BIG is known as Yellow Pages, but there is a copy of the cover of the 1992 edition which carries the statement 'The MELBOURNE BIG is not affiliated with the "Yellow Pages", Telecom, Directories (Aust.) Pty Ltd or Australian Directory Services'.   If this statement was on material presented to the respondents of this survey, the question does not make sense.   16 persons were surveyed and the responses they gave were quite varied, with some answers being 'Yellow Pages' and others 'business directories', while some respondents combined the two answers to be 'Yellow Pages business directories'.   Question D appears to lead the respondents for they were asked 'If you saw a telephone directory with a cover bearing the words: MELBOURNE BIG YELLOW PAGES who would you expect to be the business responsible for selling the advertising in the directory?'   At the same time a card bearing the words 'MELBOURNE BIG YELLOW PAGES' was shown.   If the respondent had difficulty answering they were shown another card with the words 'MELBOURNE BIG yellow pages'.   This second sign was used only once.   Because of the problems I have with these questions, I can place little weight on the survey results which purport to show that the words YELLOW PAGES are generic.

Included as part of Mr Burn's declaration, the applicant submitted a report on a survey conducted by NEWSPOLL in 1992, which probed 1200 respondents, throughout Australia, on their awareness of the words YELLOW PAGES and their relationship with Telecom.   51% recognised, unaided, that the two were connected while a further 21.5% gave the same response when offered a choice of three names and 'other'.   Almost 75% recognised the trade mark of this application as belonging to Telecom.   However as no question was raised to elicit a response as to the meaning of YELLOW PAGES in the context of this mark, and in relation to the walking fingers device, I cannot place too much weight on this result.   All in all, though, I find that the information contained in the applicant's survey carries is more persuasive than that in the opponent's survey.  

While noting Mr Mischlewski's submissions that the evidence shows the words are used to describe the applicant's services in a generic sense, I have also considered Dr Emmerson's view that the usage has been such that Telecom's services only are identified by these words.   The mark is in use and has been used for many years.   The applicant has advertised its directory extensively.   This advertising is directed to advertisers in the directory and to encourage end users to utilise these advertisements.   The directory is delivered to every Australian home and is a very familiar article.   Goods with such a high profile do tend to be referred to by their trade mark.   Some examples would be Holden, Hoover, Britannica, and Winchester where it is frequently unnecessary to additionally refer to the goods as being a car, vacuum cleaner, encyclopaedia and revolver respectively.   This is not to suggest that these trade marks have become generic because of casual use by ordinary persons.   While it is possible that the words YELLOW PAGES are used loosely instead of 'buying guide' or 'business directory', I am not persuaded that the phrase has become generic of directory advertising services.   As submitted by Mr Mischlewski, the onus is on the applicant to show that no disclaimer is required.   I consider that the weight of evidence of use over the years commencing in at least 1979, which is four years prior to the lodgement date of the application, is sufficient to discharge this onus.

Decision  
On the evidence before me unless there is an appeal against my decision, I will allow the application to proceed to registration without a disclaimer of the words YELLOW PAGES for the advertising services specified in the application.

Patricia Wearne
28 January 1994