Telstra and Yellowbook.com.au jaundiced double fail after trade mark battle

Phone Directories Company Australia P/L v Telstra Corp Ltd [2014] FCA 373

KEY ISSUES

Colour trade marks and word marks referring to colours – inherent adaptation to distinguish

FACTS

T applied to register YELLOW as a trade mark for print and online phone directories and other goods and services. P and Yellowbook.com.au Pty Ltd (Y) unsuccessfully opposed that application. The delegate found that YELLOW was not directly descriptive of the services covered by the application and that the mark had acquired some capacity to distinguish T's services given its extensive use before the application date.

Y applied to register YELLOWBOOK.COM.AU as a trade mark for print and online phone directories and other goods and services. T unsuccessfully opposed that application.