Yellownet Corporation v Telstra Corporation Limited

[1999] ATMO 10

TRADE MARKS ACT 1995

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

Re:Opposition by TELSTRA CORPORATION LIMITED to the registration of trade mark application number 663017 in the name of YELLOWNET CORPORATION

Background
Application number 663017 was filed on 6 June 1995 in the name of Cyber-Info Services, Inc., subsequently changed to YellowNet Corporation (the applicant), for registration of the word trade mark YELLOWNET in respect of services, in class 42, as follows:

Providing access to an interactive computer database in the field of general information such as names, addresses, telephone numbers, and advertisements.

Acceptance of the application appeared in the Australian Official Journal of Trade Marks of 30 May 1996.  On 29 August 1996, Telstra Corporation Limited (the opponent) filed a notice of opposition to registration of the trade mark of this application.  The opponent states a number of grounds upon which it bases its opposition.  At the hearing, the opponent's submissions and references to the evidence essentially revolved around sections 44 and 60:

• that the applicant's mark is substantially identical with or deceptively similar to a number of the opponent's prior registered trade marks which are registered in respect of closely related goods to the applicant's services and in respect of services which are the same as or of the same description as the applicant's services - subsection 44(2);

• that the applicant's mark is substantially identical with or deceptively similar to the opponent's YELLOW PAGES trade mark which, before 6 June 1995, had acquired a reputation in Australia and, because of that reputation, the use of the applicant's mark in respect of the nominated services would be likely to deceive or cause confusion - section 60.

Brief reference was also made to the grounds in relation to section 43, paragraph (b) of section 42 and subsection 41(2). 

Evidence
The only evidence served and filed in these proceedings is evidence in support which consists of a statutory declaration by Geoffrey Allan Avard with exhibits GA-1 to GA-26 and a statutory declaration by Warwick Alan Rothnie, accompanied by exhibits WAR-1 to WAR-4.  A number of Mr Avard's exhibits are confidential.

Mr Avard has been employed by the opponent in various responsible capacities since 1978.  At the time of making the declaration he was holding the position of group manager of a related company which, under the applicant's control, carries out various responsibilities in relation to the opponent's directories.  According to Mr Avard, the YELLOW PAGES trade mark was adopted by the opponent between 1973 and 1974, when the present opponent was part of the Post Master General's Department.  It had been decided then to change significantly the business directories PMG published and distributed.  Since that time, Mr Avard says, the trade marks YELLOW PAGES and the "walking fingers" logo have been  used by the opponent, or under its control, separately and together to identify the opponent's goods and services.  In addition, the opponent has used the colour yellow alone and in combination with the trade marks to denote its goods and services, particularly business directories, advertising services and business advisory services.  The business directories contain advertisements and listings of businesses arranged by type or classification.  Thus, a user of the directory, who is seeking a supplier of a particular type of good or service, can look up the appropriate classification and identify the businesses who are prepared to provide that good or service.  The opponent and its contractors also offer a range of advisory services in relation to its "Yellow Pages" business directories, particularly through their sales representatives.  Since around 1980, Mr Avard states, the business directories and the advertising services made available by the opponent, both of which are inextricably linked, have been the subject of advertising promotions on radio, television, and in the printed media.  More recently, the opponent has advertised its "Yellow Pages" directories on the Internet.  Other forms of advertising include self adhesive stickers and items like plastic rulers and pens.  The marks are also used on all documentation, letters and printed matter, including promotional and advertising material associated with the advertising service.  The opponent has provided a number of electronic versions of its products and services which are listed in detail by Mr Avard.

In relation to the extent of use of the marks, Mr Avard has produced, under exhibits which the opponent has requested not to be publicly disclosed, details of the total annual distribution and the number of different types of directories.  The printed "Yellow Pages" business directories are distributed to every household and business in Australia.  Mr Avard gives the figures of the number of visits of the opponent's website over a selected period.  He says, wherever possible, the marks have been promoted in Australia via the print and electronic media by the prominent use of the colour yellow.  In relation to the advertising outlays, Mr Avard sets out the total expenditure in respect of the advertising services under the opponent's marks used separately and in combination and the colour yellow, for the period from 1979 to 1997.  To substantiate his claim as to the effectiveness of the opponent's efforts to promote the goods and services under the marks YELLOW PAGES and the colour yellow, Mr Avard annexes to his declaration confidential figures covering the years 1980 to 1997.  The results of an exhibited survey are intended to demonstrate awareness of the "Yellow Pages" directories and a connection of the marks with the opponent.  The opponent has secured a number of trade mark registrations comprising the words YELLOW PAGES or containing the word YELLOW in the marks, a list of these accompanies Mr Avard's declaration.   

The second declarant, Warwick Alan Rothnie, a partner in the firm of the opponent's solicitors, has obtained material, under the Freedom of Information Act, on examination of the applicant's mark, copies of which are annexed to his declaration.  He notes that the examiner's search had brought up only one opponent's mark. Dr Rothnie also exhibits copies of print outs of Internet searches in relation to the applicant's mark YELLOWNET, commenting on the features shown thereon.

A hearing on the opposition was held in Canberra.  Mr Adrian Ryan of Counsel, instructed by Dr Warwick Rothnie of Mallesons Stephen Jaques, solicitors of Melbourne, represented the opponent.  No appearance was made on behalf of the applicant, nor were any written submissions made on the matter.

Section 44 - substantially identical or deceptively similar marks
In relation to the section 44 ground, Mr Ryan first referred to the opponent's four registered trade marks upon which the opponent principally proposed to rely for the purposes of this section.  Developing the section 44 issue, he commented that that section was similar to section 33 of the Trade Marks Act 1955, hence many of the questions were the same as those that arose under section 33.  Quoting the well-known passage on comparison of marks by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, Mr Ryan directed my attention to the word "yellow" appearing in both the opponent's and the applicant's marks and the word "net" included in the applicant's mark. Looking at the issue of deceptive similarity, Mr Ryan submitted that the impression created by the marks was plainly one of similarity. At the very least, the marks were sufficiently close for there to be a likelihood of confusion between them and between the sources of the goods and services in respect of which they were to be used.

In arguing that the opponent's goods are closely related to the services of the applicant and the opponent's services are the same as or of the same description as the services of the applicant, Mr Ryan relied on the frequently approved test in John Crowther & Sons (Milnsbridge) Ltd's Appn (1948) 65 RPC 369, at 372. Considering the goods of the opponent's registration 545667 and the services of the applicant, Mr Ryan submitted that the consumers would use them for precisely the same reason, that is, for tracking down a business with which they wished to deal. Having regard to the nature and characteristics of those goods and services as well as their use, it was difficult to conceive of any goods which could be more closely related to the applicant's services, he said.

In respect of the opponent's services, he submitted that, if the applicant's statement of  services was intended to cover the provision to the businesses of access to the database, then the applicant's services would effectively be the same or of the same description as some of the services encompassed in the opponent's registrations 545668 and 387413, being "advertising services promoting the services and goods of advertisers in [telephone] directories and business supplements in any medium".  Directing my attention to Dr Rothnie's evidence, Mr Ryan submitted that the services of "providing access to an interactive computer data base" included access not only to those persons who wished to use the data base, but also to the advertisers for placing an entry on the data base.   

Subsection 44(2) provides that -

44.(2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a)  it is substantially identical with, or deceptively similar to:
                  (i)  a trade mark registered by another person in respect of similar
  services or closely related goods; or
                  (ii)  a trade mark whose registration in respect of similar services or
  closely related goods is being sought by another person; and

(b)  the priority date for the registration of the applicant's trade mark in
      respect of the applicant's services is not earlier than the priority date for
      the registration of the other trade mark in respect of the similar services
      or closely related goods.

Under section 10, a mark is deceptively similar to another mark if it so nearly resembles that other mark that it is likely to deceive or cause confusion.

The opponent has referred, in particular, to four of its trade marks which were registered before the present application was filed on 6 June 1995.  Details of three of these marks, all registered from 12 November 1990, are set out below.

Number          Trade Mark         Class            Goods or Services

1. YELLOW PAGES     16       Telephone books, telephone directories and

   business directories

1. YELLOW PAGES     35       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 directories and telephone directory business supplements

1. YELLOW PAGES     38       Telecommunication services and telephone

   services.

The fourth, a composite mark of registration 387413, is shown here:

This mark was registered on 14 February 1983, in class 35, in respect of the following services:

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 or 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.

The validity of the opponent's opposition, in terms of section 44, depends upon whether the applicant's mark YELLOWNET and the opponent's above marks are found to be either substantially identical or deceptively similar, and the services of the present application are similar to those of the opponent, or the goods are closely related to the applicant's services.  I will add at this point that, pursuant to subsection 14(2), similar services to other services are defined as the same services or of the same description as the other services.  

In relation to the first enquiry, Mr Ryan has quoted the principles which are relevant here.  These are outlined in Shell v Esso, supra, where at 414-415, Windeyer J stated:

In considering whether marks are substantially identical they should, I think be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison … On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question.  The marks are not now to be looked at side by side.  The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familiar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

Viewing the marks under consideration beside each other, there seems to be no reason for regarding the marks to be substantially identical.  However, I think Mr Ryan is correct in his assessment as to their deceptively similarity.  Despite the fact that the applicant's mark creates the appearance of one word, it is obvious that this mark and the opponent's word marks bear close structural resemblance in that they are composed of two words: the word "yellow" joined with the word "net" and the separately represented words "yellow" and "pages", respectively.  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.  The only exception might be the opponent's composite mark of registration 387413, where the device element comprising the stylized "walking fingers" over an open book and surrounded by a square with rounded corners, is represented in a sufficiently prominent manner for it to strike the eye and fix itself in one's recollection - Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, at 162. Here the visual impact of the words YELLOW PAGES is somewhat overpowered by the device element.

Turning to the question concerning the goods and services covered by the marks under consideration, it will be appropriate to apply the general guidelines set out in Jellinek's Appn (1946) 63 RPC 59 and in John Crowther & Sons, supra, as suggested by Mr Ryan, in particular: looking at the nature of the goods and services, their purpose and use, and whether they are provided by the same persons.  None of these factors is to be considered as conclusive in itself.  According to the services specified in its application, the applicant is offering access to database information which includes names, addresses, telephone numbers and advertisements.  Given that the opponent's telephone and business directories of registration 545667 also contain names, addresses, telephone numbers and advertisements and would be utilized by the customers for locating the necessary business information, I agree with the opponent's submissions that, having regard to their nature, purpose and use, it must be conceded that the applicant's services are closely related to the opponent's said goods.  

From the opponent's evidence it appears that, in addition to providing access to business directory information on the computer database under the mark YELLOWNET, the applicant also invites the customers to use its database "YellowNet" for the purpose of entering an advertisement on the database.  In the first print out of the applicant's "home page" of the Internet search, attached to Dr Rothnie's declaration, "YellowNet" is described as:

"… a comprehensive business directory in a yellow pages format…
Providing free, fast access to USA business address & telephone listings including listing linked to web sites and advertising! 

ADVERTISE ON YellowNet TODAY!"

Further copies of print outs in Dr Rothnie's exhibits from a search of the Internet carried out twelve months later show icons on "How to Advertise".  There is a link which leads to International Telephone Directories, including directories in Australia, which link eventually enables one to bring up the opponent's "Yellow Pages" directory on the Internet.  A general description of the nature of the applicant's services under the head "About YellowNet", inter alia, states:

"… YellowNet pioneered online directories by introducing the first comprehensive "Yellow Pages" format nationwide business directory on the World Wide Web in June 1995.

Today, YellowNet World-Wide Pages is a premium business directory on the Web with over 17 million business listings and thousands of advertisers.  Our customized search engine and easy-to-use "Yellow Pages" interface provides Internet users throughout the world a familiar way to find the products and services they want with an unmatched standard of speed and functionality. …

YellowNet provides affordable, effective Internet advertising starting at $100 annually. …".

As asserted by the opponent, this evidence has demonstrated that through the applicant's own data base the customers are able to access other data bases; in the present case it effectively means that the interested parties can access the electronic version of the opponent's "Yellow Pages" directories.  It also suggests that through the access to the applicant's data base to the businesses, those businesses can advertise through the applicant's data base.  From this it can be deduced that the purpose and use of the applicant's and opponent's services, particularly the advertising services for promoting the customers' goods and services in the "Yellow Pages" directories, are virtually the same, differing only in the manner in which those services are made available to the public: whilst the opponent provides its customers a service by inserting their advertisements in a printed publication, the applicant provides to the customers an entry in its data base similarly advertising the customers' services.  There is nothing before me to refute this proposition.  In light of the opponent's evidence then, I find the applicant's services to be similar to the services included in the opponent's registrations 387413 and 545668, within the meaning of para (b) of subsection 14(2), i.e. services of the same description.  There were no submissions or evidence as far as the services of registration 545669 are concerned - telecommunication and telephone services.  Applying the same criteria to these services as I have done previously, I do not think such services could be regarded as similar to those of the applicant.   

In view of my foregoing comments, I find the applicant's services to be closely related to those of the opponent's registration 5445667.  As I do not consider the mark of registration 387413 deceptively similar to the subject mark, nor the services of registration 545669 to be similar to the applicant's services, use of the applicant's marks offends in terms of section 44 only in relation to the marks of the opponent's registrations 545667 and 545668. 

Deception or confusion with a mark that has acquired reputation - section 60

In relying on the section 60 ground, Mr Ryan discussed pertinent evidence extracted from Mr Avard's declaration and exhibits, reaching the conclusion that use of the applicant's mark in respect of the services stated in the application would be likely to deceive or cause confusion in light of the built up reputation of the opponent's marks YELLOW PAGES.  Having considered Mr Avard's evidence, I am in complete agreement with Mr Ryan's submissions for the following reasons.

Section 60 of the Act reads:

60.  The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)  it is substantially identical with, or deceptively similar to, a trade mark
             that, before the priority date for the registration of the first-mentioned
             trade mark in respect of those goods or services, had acquired a

reputation in Australia; and

(b)  because of the reputation of that other trade mark, the use of the first-
                 mentioned trade mark would be likely to deceive or cause confusion.

Under this section, if the opponent's and the applicant's marks are determined to be substantially identical or deceptively similar, it is to be decided whether the reputation acquired by the opponent's trade marks before the date of the present application is such that the applicant's mark, used in a normal and fair manner in relation to the nominated services, would be reasonably likely to cause deception and confusion amongst a substantial number of persons.  The priority date, or the date of the present application, is 6 June 1995.      

In considering the issue concerning section 44, I have already found the subject mark to be deceptively similar to the marks YELLOW PAGES of the opponent's registrations 545667 and 545668. 

The words YELLOW PAGES have been used by the opponent or its predecessor in respect of printed business directories since 1974.  In these directories are inserted advertisements and listings of businesses for persons who need to locate a supplier or provider of goods or services of interest.  Mr Avard's exhibit, which contains records of the total number of distributed business directories in Australia to every household and business between 1981 and 1995, shows exceptionally high figures of the distributed directories.  These figures are not to be published for reasons of confidentiality.  In addition, according to Mr Avard's evidence, since the middle of 1980's, the "Yellow Pages" directories have also received progressively increasing exposure through the electronic media, initially being restricted to subscribers or to those possessing a password.  The Sydney and Melbourne directories had become accessible to all the Internet users in March 1995, but since December 1995 all of the opponent's hard copy versions of the directories have been made available on the Internet.  The opponent's high focus on advertising via the print and electronic media of its directories and the businesses advertised therein is illustrated by the enormous expenditure evidenced in the relevant period since 1979, the amounts being confidential.  In support of the opponent's reputation in the YELLOW PAGES trade marks, Mr Avard has annexed a survey conducted by Newspoll Market Research in 1992 when 1,200 persons were interviewed nationally on the telephone.  The results of those interviews, which are to be treated as confidential, reveal a very impressive awareness of the "Yellow Pages" directories in all the states in Australia, a great percentage of the interviewees having been aware of the directory for more than 15 years.  It is also significant to note that a considerable percentage of the respondents in each state have identified, unaided, Telecom Australia, the opponent's predecessor in business, as the publisher of the "Yellow Pages" directories. 

The opponent's evidence has proved extensive and substantial use of the marks YELLOW PAGES in respect of business directories and advertising services throughout Australia for approximately twenty years before the priority date.  The opponent has also demonstrated wide recognition of the marks in respect of business directories in the Australian community, as well as their direct connection with the opponent.  Its acquired reputation, in respect of business directories and advertising services, before the filing of the present application is beyond doubt.  Even though no evidence has been presented of any deception or confusion between the opponent's and applicant's marks, having regard to this reputation, I believe that use of the applicant's mark YELLOWNET in respect of its services would be likely to deceive or confuse.  In view of the close resemblance of the marks in question, the fact that the suffix "net" in the applicant's mark would be perceived by the customers as a short version for "Internet", as well as the relationship between the applicant's services and the opponent's directories and advertising services, discussed under the section 44 ground, there would be a strong likelihood that a considerable proportion of persons dealing with the sort of services the applicant is offering would have a reason for suspecting that those services were provided by the opponent - Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, at 608. In short, the applicant's services under the mark YELLOWNET could be viewed by the customers as providing access of the opponent's "Yellow Pages" directories on the Internet.

It is apparent then that the opponent has adequately established a case in terms of section 60 of the Act.  

Other grounds of opposition
Making only very brief comments, Mr Ryan submitted that for essentially the same reasons as those in relation to section 60, the applicant's mark should also be refused registration under the following sections:

section 43, as its use would be likely to deceive or cause confusion because it connotes a connection with "Yellow Pages" directories or the source thereof;

paragraph (b) of section 42, because its use would be contrary to law in that it would amount to passing of and/or contravention of section 52 of the Trade Practices Act; and

subsection 41(2), because the applicant's mark is not capable of distinguishing the applicant's services from the goods and services of the opponent.

Concerning the section 43 ground, I do not think this to be valid in the present case because, as explained in the Trade Marks Office Draft Manual of Practice and Procedure, it is considered by the Registrar that the provisions of that section were intended for a ground of rejection based on possible deception or confusion arising from the nature of the mark itself when applied to goods or services, rather than deception or confusion likely to be caused by a conflict between the marks.  As no evidence was provided to the effect that, having regard to "some connotation" in the applicant's mark it could deceive or cause confusion, there is no basis for considering the mark in terms of section 43.  Similarly, in the absence of evidence substantiating the opposition as far as the issues relate to sections 42 and 41, I have no cause to reflect on these matters.  

Conclusion
Having regard to the foregoing, I find that the opponent has been successful on the grounds based on sections 44 and 60 of the Act.  Subject to any appeal from this decision, I refuse to register the mark of the present application. 

No costs were sought by the opponent and I make no award at this time.  

Vija Zars
Hearing Officer
29 January 1999