Books and ducks can't be yellow, court rules

In YGP IP Limited v Yellow Book.com.au Pty Limited (unreported, CIV-2007-404-2839, July 13 2007, Allan J), the High Court of New Zealand has issued orders restraining the defendants from hosting business directories at 'www.yellowbook.co.nz' and 'www.yellowduck.co.nz'.

YGP IP Limited and Yellow Pages Group Limited are the owners of the name Yellow Pages. They have been providing hard copy and online business directories under that name for some years.

Yellow Book.com.au Pty Limited, a company incorporated in Australia, and two individuals began operating an online business directory at the domain name 'www.yellowbook.co.nz'. YGP and Yellow Pages Group believed that the listings and classifications had been copied from its online Yellow Pages directory.

They also discovered what they believed to be a copy of their online Yellow Pages directory at 'www.yellowduck.co.nz'. They sued for infringement of trademark and copyright, and breach of the Fair Trading Act, which prohibits misleading and deceptive conduct in the course of trade.

Yellow Book.com.au sought leave to allow a director to represent the company in court. The High Court rejected the application on the basis that the rules are clear that while individuals may represent themselves, companies must be represented by counsel.

The defendants also sought to argue that the New Zealand courts had no jurisdiction or alternatively were forum non conveniens, and that the dispute should be heard in Australia. The court rejected both of these arguments. The judge found that because the defendants' websites were available in New Zealand, the defendants had chosen to act in such a way as to bring themselves within New Zealand law. Further, Australian courts have no jurisdiction to hear a dispute about infringement rights held in New Zealand.

Moreover, the plaintiffs successfully showed an arguable case of copyright infringement despite the defendants' claims that they had compiled their own directory.

The judge then turned to consider trademark infringement. The judge agreed with the plaintiffs' submission that YELLOW PAGES and YELLOW BOOK are confusingly similar. Relevant factors included the following:

• 'BOOKS' and 'PAGES' have a similar idea or meaning;
  
  
• Consumers are likely to recall the marks by the word 'yellow';
  
  
• 'YELLOW' is an essential feature of both marks; and
  
  
• The first plaintiff has an extremely strong reputation in the name Yellow Pages.

The judge had no difficulty in finding an arguable case of trademark infringement. The same was true of the claim under the Fair Trading Act for misleading and deceptive conduct in the course of trade.

The balance of convenience also favoured the plaintiffs. There was no evidence that the defendants could pay damages. Given that the defendants submitted that they could not afford legal representation and that the second defendant was bankrupt, this was no surprise. The plaintiffs, on the other hand, have significant businesses in New Zealand.

The judge thus issued orders restraining the defendants from hosting business directories at 'www.yellowbook.co.nz' and 'www.yellowduck.co.nz'. The plaintiffs also attempted to restrain the defendants' use of the colour yellow and any use of the word 'yellow'. The judge refused, stating that the plaintiffs' case was not run on any basis which would justify such restraints.

The judge directed that the matter be set down for trial without delay.

For background information on this case, see "Court battle over use of Yellow Book name commences".

Kate Duckworth, Baldwins, Wellington