The Australian Telecommunications Commission v Business Marketing Australia Pty Ltd

This case involved an opposition by Business Marketing Australia Pty Ltd to a trade mark application by The Australian Telecommunications Commission for the words "yellow pages" combined with a device of stylised walking fingers over an open book. The application, lodged in 1983, sought registration for advertising services related to telephone directories and business supplements. The opposition was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the words "yellow pages" had become a generic term for advertising services related to telephone directories, thereby necessitating a disclaimer for the trade mark to be registered. The opponent argued that the words were generic and incapable of registration as a trade mark, citing case law where words had become the common name for products. The applicant contended that "yellow pages" had always been used as a trade mark to identify its specific advertising services and had not lost its distinctiveness.

The delegate considered extensive evidence and submissions from both parties. While acknowledging that the words "yellow pages" were descriptive of the product's colour and format, the delegate found that the applicant's extensive and consistent use of the term as a trade mark, particularly since at least 1979, had established it as distinctive of their advertising services. The delegate distinguished the case law cited by the opponent, finding that the services in question were not so specific that "yellow pages" was the only available term, and that terms like "directory advertising" or "business directory advertising" were also descriptive. The delegate also found that the applicant had actively protected its trade mark.

Ultimately, the delegate concluded that the applicant had discharged the onus of showing that a disclaimer was not required. The delegate found that the weight of evidence supported the distinctiveness of the trade mark "yellow pages" in relation to the specified advertising services. Accordingly, the delegate decided to allow the application to proceed to registration without a disclaimer.