In a recent decision of the High Court of Australia (“HCA”) in the case Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd  FCAFC 156, the word “Yellow” was denied registration as a trade mark.
The HCA held that the mark was not inherently adapted to distinguish the designated goods or services from other’s goods or services, and was deceptively similar to previously registered trade marks.
In 2003, Telstra, Australia’s largest telecommunications company, which owns the “YELLOW PAGES” mark, applied to register the word “Yellow” as a mark in several different classes. The registration was then opposed by Phone Directories Company Australia Pty Ltd. The lower Federal Court denied the registration of the “Yellow” word mark. Telstra then decided to appeal against the lower Court’s decision.
The HCA ruled that the “Yellow” mark was descriptive of the colour widely used for print and online directories and that consumers recognise directories by reference to the colour yellow. Accordingly, other traders in the industry would likely use the word “Yellow” to signify their phone directories in a way that would infringe the mark. As such, the HCA held that the mark was descriptive and thus not inherently adapted to distinguish the designated goods from the goods of other traders.
What is interesting about this decision is how the HCA links the word describing the colour, and the colour itself. Telstra claimed that the Judge in the Court below conflated the two in its appeal. The HCA rejected Telstra’s arguments and stated that “there is clearly a link between a word describing a colour and the colour itself and the two cannot be cleanly separated”. If the colour itself, with or without the word describing the colour, has been known to signify print and online directories, consequently traders and consumers are likely to recognise the word describing the colour to signify them as well.