Mellow Yellow

December 8, 2015 Published by

Yellow? Or YELLOW? Yellow the colour, or yellow the word? Does it really make a difference? In the recent Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd (2015) it did. YELLOW has been held to not be distinctive of Telstra’s phone directory services. In two separate prior judgements Justice Murphy of the Federal Court has refused the word YELLOW as a registrable trademark for Telstra in connection to a range of goods and services relating to its telephone directories.  The decision has again been upheld on appeal by the Full Federal Court of Australia.

Despite Telstra’s extensive use of the word YELLOW prior to the application, this was not considered adequate to distinguish the use of YELLOW by Telstra from other traders. The Full Court found at [118] that ‘business directories’ and ‘yellow’ are not interchangeable to the consumers of these goods and services. The Court then went on to identifying that yellow is not inherently descriptive. The Court held at [149] that the word yellow and the colour cannot be separated as easily as Telstra claims, that there is a link between a word and its description of colour. The word yellow in fact describes the colour and if the colour signifies print and online directories, the word would be descriptive of such goods and services.  In essence the YELLOW trade mark could not be said to differentiate the designation of goods and services [151].

This case emphasises the difficulties faced under Australian law to demonstrate that a mark has been used to such an extent that it has become distinctive of a company’s goods or services.  It might be time for the Courts to follow Dorothy’s example and take the yellow brick road and reconsider the registrability of the word YELLOW as a trademark.

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