I see Australian Telco Telstra got their lawyers on to consulting firm, Anecdote, this week over the use of the phrase ‘yellow pages’. Anecdote (whose blog is well worth reading) has published a white paper in which they used the phrase yellow pages to refer business directories.
Telstra were not happy and their lawyers told Anecdote: “Our clients appreciate that any infringement of our clients’ rights by you is likely to have been unintended. You are requested to remove all references to “Yellow Pages” or any trade mark which is substantially identical or deceptively similar to our clients’ registered trade marks within the next 14 days and to cease use of those trade marks in the future. lf this is attended to, our clients do not intend to take any further steps with respect to past infringement”.
Anecdote made the change, but it does raise the interesting issue of whether or not yellow pages should be trademarkable any more. It is classed as a generic term in the US (American Loren Murphy Berry is credited with inventing ‘Yellow Pages’) and can’t be trademarked (although it can as part of combinations, so Sometown Yellow Pages would be ok) and a trademark including “yellow pages”, would require the owner to “disclaim” any proprietary right to those words, apart from your specific combination (i.e., with other words, with a distinctive logo, etc).
In the UK , Yell holds the UK Trade Mark and has certainly not be shy in going after anyone if thinks has infringed. Last year it went after the father and daughter who have set up the Yellowikis website. Despite the fact that the website was set up in 2004, Yell suddenly decided that users will confuse the website with their site. According to Yell, at the time, Yellowikis is “plainly purporting to be associated with (Yell)” and “this amounts to a misrepresentation… which may result in third parties associating (Yellowikis) with our client (Yell)” … “The continued presence in the market of your website will cause substantial damage to (Yell’s) good will and reputation”. Yell was arguing that the use of the name Yellowikis, the yellow logo used by the service and its positioning at the top left of the website amounted to a misrepresentation which may result in third parties associating the Yellowikis website with Yell.
The case didn’t make the courts and the yellowikis site, now renamed Open Business Listings, stated “The trademark dispute between Yell Limited and Paul Youlten concerning the Yellowikis website has been satisfactorily resolved.” It also says the site will be relaunching soon. It is dated 09/Oct/06.
From a blinding logic point of view, the mere fact that almost everyone calls the directories yellow pages to me shows how generic the term is, otherwise why would companies in the UK, France, Canada, Austria, New Zealand, US, to name but a few, have used the term to start with. Of course, this doesn’t matter, as a WIPO decision from 2004 in favour of Yell demonstrates:
“Even if the term “yellow pages” is sometimes used to designate classified telephone directories in a descriptive manner, this does not yet result in a finding that YELLOW PAGES is a generic term and that the Complainant does not enjoy any exclusive rights in the trademark YELLOW PAGES in the United Kingdom. First, the fact that the Complainant has obtained a series of trademark registrations for YELLOW PAGES, alone or in combination with other elements, in the United Kingdom obviously proves, at least in the context of these UDRP proceedings, that under UK trademark law, the term YELLOW PAGES is capable of distinguishing the relevant goods and services of one company from those of another. Second, the fact that the term “yellow pages” may be considered as purely generic in certain countries does not have any direct relevance for the legal situation in other countries, in particular in the United Kingdom. Third, the fact that a certain percentage of the public uses a (registered) trademark in a descriptive manner does not yet mean that such trademark has become a descriptive term and that its legal protection has ceased. Only if the public at large would perceive a certain word as purely descriptive, the exclusive rights to a trademark corresponding to such word would be lost.”
So, beware when saying yellow pages …