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  • Local Directories was successful in its appeal against Telstra Corporation Limited’s trade mark application for the word YELLOW to be registered as a trade mark
  • The Federal Court found the word YELLOW is not inherently adapted to distinguish print and online telephone directories, and related goods and services, because it describes the colour yellow, which is commonly and honestly used by other traders in Australia and internationally in relation to these products and services
  • Telstra did not use the word YELLOW as a trade mark before filing its trade mark application, and any use which Telstra had made post-filing was insufficient to establish that the word YELLOW distinguished Telstra’s goods and services from those of other traders
  • Businesses seeking to register a trade mark for a product or brand name that is descriptive or indicative of the relevant goods and services should take note that such monopolies will not be lightly granted

On 11 April 2014, Justice Murphy delivered his judgment granting two appeals filed against decisions of Delegates of the Registrar of Trade Marks which had allowed Telstra’s Australian trade mark application for the word YELLOW “in respect of broad classes of goods and services which include print and online telephone directories and related goods and services”.

One of the appeals was filed by Phone Directories Company Australia Pty Ltd (with K&L Gates acting), and was part of a broader landscape of litigation in the Federal Court and proceedings in the Trade Marks Office between this company (and related entities) trading as Local Directories and Telstra Corporation Limited and a related entity. In the recent judgment, Justice Murphy found that the word yellow “has no inherent adaptability to distinguish Telstra’s designated goods and services from the goods or services of other persons” as the word is descriptive of the colour yellow, which is the common industry colour in Australia and overseas for print and online business directories.

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