YELLOW PAGE distinctive for advertising services, rules panel
In Yellow Page v Philip Media ApS, a Danish Internet Forum (DIFO) panel has ordered the transfer of 'yellowpage.dk' to the complainant - a small advertising agency that owns registrations for 'yellow-page.dk' and the trademark YELLOW PAGE.
Yellow Page registered the mark in 1985 and uses the domain name 'yellow-page.dk' to promote its services on its website. Philip Media, a company involved in internet advertising, registered 'yellowpage.dk' in September 2002. Yellow Page filed a complaint with DIFO, claiming that the domain name infringed its rights as it was almost identical to its business name and trademark. In addition, Yellow Page contended that Philp Media was using the domain name in connection with services identical and/or similar to those covered by the YELLOW PAGE registration.
In response, Philip Media argued that YELLOW PAGE was devoid of the distinctive character necessary to function as a trademark because Danish consumers would associate it with the generic term 'yellow pages'. Furthermore, Philip Media claimed that its services were not identical to those offered by Yellow Page and that it had registered the disputed domain name in good faith.
The DIFO panel upheld Yellow Page's complaint and ordered the transfer of 'yellowpage.dk'. It reasoned that the YELLOW PAGE mark was inherently distinctive for advertising services. The panel held that there was no evidence that the mark was or had become a descriptive designation for advertising services.
The decision shows that DIFO panels will consider the exact circumstances of each case, including the relevant goods or services, when assessing the distinctive character of a mark. If, for example, the mark had been used for telephone or business directory services, the result may have been different.
For discussion of a case in which the Danish equivalent of 'yellow pages' was found to be descriptive, see Danish term meaning 'yellow pages' not distinctive.
Lisbet Andersen, Bech-Bruun Dragsted, Copenhagen
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