Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373

FEDERAL COURT OF AUSTRALIA

Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 Citation: Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373

Parties: PHONE DIRECTORIES COMPANY AUSTRALIA PTY LTD v TELSTRA CORPORATION LIMITED

File number: VID 373 of 2011

Parties: YELLOWBOOK.COM.AU PTY LTD and EMMANUEL KHOURY v TELSTRA CORPORATION LIMITED

File number: QUD 220 of 2010

Judge: MURPHY J

Date of judgment: 11 April 2014

Corrigendum: 24 April 2014

Catchwords: TRADE MARKS – whether respondent's trade mark is capable of distinguishing the respondent's goods and services – whether and to what extent the respondent's trade mark is inherently adapted to distinguish the respondent's goods and services – whether the respondent's trade mark is descriptive – whether other traders acting without improper motive would wish to use the respondent's trade mark – the relevance of international usage of trade indicia – the relevance of post-lodgement date use of the respondent's trade mark – whether use of trade indicia constitutes use as a trade mark – whether the applicants' or respondent's trade marks are deceptively similar to prior trade marks – whether registration should be refused because the respondent had no intention to use the trade mark – the threshold for use or intended use of a trade mark – whether the suffix ".com.au" in a trade mark is a distinguishing feature – whether the use of the applicant's trade mark is honest concurrent use