As the fashion industry deliberates over what colour is the new black for the seasons to come, the next colour that is the subject of a trade mark registration dispute is here!
It seems only yesterday that the colour 'purple' trade mark litigation disputes were settled when Cadbury UK Ltd and Mars Australia Pty Ltd were successful in obtaining trade mark protection for their particular shades of purple. Now, it seems an era over the colour 'yellow' may be gaining momentum with Telstra reportedly seeking leave to appeal the recent decision of the Federal Court, which arises from a recent Federal Court decision that Telstra had no rights to registering the colour 'yellow' as a trade mark.
This article provides a snapshot of the battle between Telstra Corporation Limited (Telstra) and Phone Directories Company Australia Pty Ltd (Phone Directories) by limiting it to the colour 'yellow' trade mark registration.
Timeline of the Dispute
The timeline of this decision can be summarised as follows:
The registration and use of the colour yellow
Telstra has applied to register the word 'yellow' as a trade mark in broad classes of goods and services including telephone directories. During the course of the proceedings, Telstra had provided extensive evidence that it has used the colour yellow in published materials, in its website and mobile app directories and it supported all of its directories with a huge amount of yellow themed marketing under the 'yellow' trade marks and Yellow Pages trade marks.
Court's Decision on the colour 'Yellow'
Justice Bernard Murphy held that “the yellow mark has no inherent adaptability to distinguish Telstra’s designated goods and services from the goods or services of other persons."
Furthermore, the Court held that despite Telstra acquiring a secondary reputation in yellow, the association between the colour yellow and Telstra or its directories in the minds of consumers was not strong. This was based on matters including the following, which is not intended to be exhaustive:
Evidence was provided to the effect that yellow was descriptive and commonly used for business directories internationally. The Court considered that it demonstrated that Telstra followed an international trend to adopt the colour yellow.
The yellow trade mark had no inherent adaptation to distinguish the designated goods and services from other goods and services.
The colour yellow was not distinctive as Telstra had not limited its use of the colour yellow to an unusual shade of yellow.
What this means for business
This case illustrates the value that companies place on protecting their brand and brand recognition. Despite, Telstra being unsuccessful in this instance, it is established law that a trade mark may be registered for things other than words and logos. Trade mark protection also covers sounds, shapes and colours in limited circumstances. By using the colour purple as an example:
Cadbury was unable to register the general colour purple but was successful in registering a specific shade of purple as a trade mark on the packaging for block chocolate and boxed chocolate.
Mars group was successful in registering the colour purple for cat food as its colour purple was invented for specifically for the Whiskas cat food range.
