Athens court sees yellow in directory trademark dispute

In a recent judgment in preliminary injunction proceedings the First Instance Court of Athens ruled on a number of interesting IP protection issues, including colour protection. The applicant produces the Greek Yellow Pages, which is available both in print form and online. The main distinctive elements of its product are the yellow colour surrounding a mark showing a telephone receiver above an arrangement of curved horizontal lines (forming a bow) that represent the pages of an open book.

As the applicant’s product enjoyed a state monopoly for many years, its distinctive elements were found to have acquired and to enjoy distinctive power and repute. The yellow colour is also dominant in the online version of the directory, where the information can also be searched for through windows entitled “who”, “what” and “where”.  

The defendant also markets a business directory, again available both in print format and online, under the mark 11880.

The applicant claimed confusing similarity, arguing that:

• The defendant’s printed business directory had the same dimensions as the applicant’s business catalogue.
• Its basic and dominant colour was yellow (albeit a brighter tone).
• The mark consists of a telephone receiver above curved horizontal lines (forming a bow) that represent the pages of an open book, but from a slightly different angle when compared to the applicant’s mark.

The same features are used in the online version, where the defendant also uses a confusingly similar arrangement of the words “who”, “what” and “where”.

The court reiterated the rule that despite dissimilarities in the word marks, a comparison of the device elements of the marks and the product trade dresses may tilt the scales in favour of confusing similarity, considering that consumers can link the device element with the business. The court took into account that the devices of the marks in question had some differences in the selection of colours (bright yellow and black for the defendant, darker yellow and blue for the applicant) and that the actual position and viewing angle of the curved lines was slightly different; however, these differences are not enough to avoid creating an “overall visual impression of similarity” between these marks. As a result, there was a risk of confusion for consumers, which may lead them to believe that the defendant’s product bearing the specific mark is either a product of the applicant (or of its business affiliate), or merely a newer version of the applicant’s mark (which was first commercialised in 1971). According to the court, this risk was significant given the fact that becoming involved in the provision of telephone/business directory services and products, the defendant used to advertise its audiotex services business in the applicant’s business directory, and the defendant’s 11880 mark was displayed on the cover and inner pages of the applicant’s directory.

The court did not reach the same verdict with regard to the use of the yellow colour in the defendant's printed and online directories. On the contrary, it held that the mere use of yellow by itself created no likelihood of confusion since the yellow colour characterises internationally the business and telephone directory sector, and therefore its use as such could not distinguish the products or services of a specific company in this sector. The same applied to the arrangement of the online search windows and the use of words “what", "who" and "where”.

However, the court ruled partly in favour of the applicant, concluding that the approximation by the defendant of the applicant’s mark comprising the telephone receiver constituted trademark infringement, entailing a risk of consumer confusion, and was also an act of unfair competition.