[LINK] 'Yellow Pages' as a Trademark

[Ivan Trundle]

Unbelievable nonsense, Roger.

A simple Google (Australia) search of the term 'Yellow Pages', and a  
cursory look at the first 20 or so of the 309,000 results show clearly  
that the lawyers mentioned have their work cut out for the next 150  
years or so.

On 18/01/2008, at 10:44 AM, Roger Clarke wrote:

> <snip> Note that the use of the term on the page is quite general,  
> and there is no evidence of any attempt to appropriate the term, nor  
> to benefit commercially or otherwise from its use, nor to denigrate  
> the IP owner.  In fact it promotes your site, and speaks in a  
> complimentary manner about it.  Under the circumstances, the letter  
> is not only inappropriate, but oppressive.

Quite. This is exactly the point. There is no dilution of the trade  
mark, nor misrepresentation.


http://www.artslaw.com.au/LegalInformation/Trademarks/default.asp  
(quoting IP Australia information):

[Preventing others from using your trade mark]
Trade mark registration can assist you to prevent (from the date your  
trade mark is registered) someone from using your trade mark or a  
similar trade mark, and also to obtain compensation for unauthorised  
use or infringement from that time.  To be successful in an  
infringement action it is necessary to show that:

• use of the infringing mark was use as a trade mark. That is, the  
infringing trade mark was being used to indicate a connection, in the  
course of trade, between goods or services and the (infringing) trader  
or service provider; and

• the infringing trade mark is identical, substantially identical or  
deceptively similar to your trade mark; and

• the goods or services (or both) in relation to which the infringing  
trade mark was used are the same or at least similar or closely  
related to the goods or services for which your trade mark is  
registered.

iT