Telstra Corporation Limited v Phone Directories Company Pty Ltd (No 2) [2014] FCA 741

Telstra Corporation Limited v Phone Directories Company Pty Ltd (No 2) [2014] FCA 741

Telstra's claims concerning the PDC Respondents' website and mobile app directories were dismissed because the use of yellow, considered in context, was unlikely to convey to ordinary or reasonable directory advertisers or users, or a not insignificant proportion of those classes, that the services were published by or associated with Telstra. Yellow had become widely used for business directories, Telstra's association with yellow was not strong, users were unlikely to locate or choose the website or app because of yellow, and the respondents sufficiently differentiated their services through the LD Name and Logo, the absence of Telstra's Yellow Pages Trade Mark and Walking Fingers, a...

Jurisdiction
Australia
Judgment Date
11 July 2014
Procedural Posture
Misleading or Deceptive Conduct and Passing Off Proceeding Concerning Trade Indicia in Print, Website and Mobile App Directories / Supplementary Reasons for Judgment
Outcome
Telstra's claims must be dismissed.
Legal Topics
['misleading or Deceptive Conduct' 'use of Colour Yellow as Trade Indicia' 'website and Mobile App Directories' 'secondary Reputation' 'differentiation of Competing Directories']
['trade and Commerce' 'trade Practices' 'passing Off'] ['misleading or Deceptive Conduct' 'use of Colour Yellow as Trade Indicia' 'website and Mobile App Directories' 'secondary Reputation' 'differentiation of Competing Directories']

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Procedural Posture

Misleading or Deceptive Conduct and Passing Off Proceeding Concerning Trade Indicia in Print, Website and Mobile App Directories / Supplementary Reasons for Judgment

Legal Issues

  1. 1 ["Whether the PDC Respondents' conduct from June 2005 in publishing yellow coloured website directories under the LD Name and Logo conveyed, or was likely to convey, that they were published by or associated with Telstra or its directories." "Whether the PDC Respondents' conduct from 2011 in publishing a yellow coloured mobile app directory under the LD Name and Logo conveyed, or was likely to convey, that it was published by or associated with Telstra or its directories." "Whether directory advertisers or directory users were likely to suffer a misconception from the respondents' use of yellow on their website and mobile app directories."]

Ratio Decidendi

Telstra's claims concerning the PDC Respondents' website and mobile app directories were dismissed because the use of yellow, considered in context, was unlikely to convey to ordinary or reasonable directory advertisers or users, or a not insignificant proportion of those classes, that the services were published by or associated with Telstra. Yellow had become widely used for business directories, Telstra's association with yellow was not strong, users were unlikely to locate or choose the website or app because of yellow, and the respondents sufficiently differentiated their services through the LD Name and Logo, the absence of Telstra's Yellow Pages Trade Mark and Walking Fingers, a...

Court Disposition

Telstra's claims must be dismissed.

Orders

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