Telstra Corporation Limited v Phone Directories Company Pty Ltd [2014] FCA 568

FEDERAL COURT OF AUSTRALIA

Telstra Corporation Limited v Phone Directories Company Pty Ltd [2014] FCA 568 Citation: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2014] FCA 568

Parties: TELSTRA CORPORATION LIMITED (ACN 051 775 556) and SENSIS PTY LTD (ACN 007 423 912) v PHONE DIRECTORIES COMPANY PTY LTD (ACN 059 776 091), AUSTRALIAN LOCAL DIRECTORIES PTY LTD (ACN 078 856 318), ADAM HARGRAVES, GLENN HARGRAVES, DANIEL STOTEN and LOCAL DIRECTORIES COMPANY PTY LTD (ACN 130 550 971)

File number: VID 276 of 2007

Judge: MURPHY J

Date of judgment: 30 May 2014

Catchwords: TRADE AND COMMERCE – Trade Practices – misleading or deceptive conduct – misleading or deceptive conduct in the taking of a competitor's trade indicia – passing off – secondary reputation in the colour yellow on covers of telephone directories – date for assessing reputation in yellow – relevance of international use of colour yellow – whether respondents' use of yellow covers on telephone directories was misleading or deceptive – identification of the class of consumers – erroneous assumption as to trade source – intention to deceive – failed intention to deceive – relevance of strength of reputation – relevance of use of common trade indicia – sufficiency of differentiation between similar products – whether respondents have done enough to differentiate their directories – conduct not misleading or deceptive TRADE AND COMMERCE – Trade Practices – misleading or deceptive conduct – advertisements in telephone directories – misleading advertisement regarding comparative consumer usage COPYRIGHT – unjustifiable threats of copyright infringement – relevance of bona fides – whether threat is groundless or unjustifiable