Yellow pages, UK Trademark law, wikis and passing off.

I sense I may be unpopular in parts of the ‘sphere for this post-response. Cease and desists are the talk of  town at the moment, what with the web2.0 farce, Redmonk and Gartner, and now  Ross highlighted the challenges that Yellowiki faces.  

I’m sticking up for the law on this one.
1. Very very very few judges are stupid. (some lawyers are)
2. UK law has stood up well to 2000+ years of change, it will cope with web 2.0.
3. Ignorance is no defence, neither is having a wiki.
4. If you own something, you have a  right to defend it against damage, even from small guys.
5. The Law examines the facts first and then makes a judgement. 
Yell is attempting to protect its rights in the UK- It is obliged to do so in the interests of its shareholders. This is a basic principle of the free-market system.  Yell, and the previous owners of the mark, have built the brand over many years, so rather than immediately jumping to the defence of the small guy just because it is a wiki, perhaps a more measured look at the case based on UK law would be appropriate. 

We are talking about UK law here, not US law. Trademark law is different, especially with the common law concept of passing off, which may be relevant here.

Passing off is a common law remedy. To succeed, a claimant must show he has a reputation, that there has been a misrepresentation, and that misrepresentation has caused or is likely to cause damage.

The wikipedia entry on passing off is actually rather good (that may be ironic)

It is up to Yell to prove the three part test (the three part test -reputation, misrepresentation, and damage), not for Yellowiki to disprove them. Yellowiki are free to continue trading until a court or a domain name abitration rules otherwise.

Colours can be trademarked.

• Orange is trademarked for mobile phones
• I understand that Yellow Pages is a valid trademark in the UK.

As this is related to a domain name, it is likely not be resolved in the UK courts (at least not initially), but rather by domain name dispute arbitration, probably by the WIPO.

These WIPO judgements involving Yell are worth a look at: http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0968.html This has some similarities to the case here. This case was decided in favour of the respondent.

http://arbiter.wipo.int/domains/decisions/html/2004/d2004-0008.html This also has some similarities. This case was decided in favour of the compliant.

To quote from that case..

The Panel finds that the Domain Name is confusingly similar to the trademark YELLOW PAGES in which the Complainant has rights. The Complainant has established that it enjoys exclusive right to the trademark YELLOW PAGES in the United Kingdom.

Even if the term “yellow pages” is sometimes used to designate classified telephone directories in a descriptive manner, this does not yet result in a finding that YELLOW PAGES is a generic term and that the Complainant does not enjoy any exclusive rights in the trademark YELLOW PAGES in the United Kingdom. First, the fact that the Complainant has obtained a series of trademark registrations for YELLOW PAGES, alone or in combination with other elements, in the United Kingdom obviously proves, at least in the context of these UDRP proceedings, that under UK trademark law, the term YELLOW PAGES is capable of distinguishing the relevant goods and services of one company from those of another. Second, the fact that the term “yellow pages” may be considered as purely generic in certain countries does not have any direct relevance for the legal situation in other countries, in particular in the United Kingdom. Third, the fact that a certain percentage of the public uses a (registered) trademark in a descriptive manner does not yet mean that such trademark has become a descriptive term and that its legal protection has ceased. Only if the public at large would perceive a certain word as purely descriptive, the exclusive rights to a trademark corresponding to such word would be lost. Furthermore, the addition of the words “uk” and “online” do not distinguish the domain name from the trademark.

As you can see from these cases this is not the first time someone has created domain name similar to that of  trademarks belonging to Yell. It is difficult to say which way the case would go. It is not a case of a big guy just bullying a small guy with a spurious cease and desist, but a case with merits on both sides. Exactly what arbitration and the courts are designed to help with.

It is very likely that the inventors of the wiki acted in ignorance when they created the site, but this is no defence in law. When you set up an online business, you need to be aware that it may have offline implications.  Just because you have a wiki, doesnt make you beyond the law.

Instead of just jumping to blindly to the defence of the small guy, I wish that sometimes the collective wisdom of the blogsphere would pause and look at the facts. I dont know who is right, but I’m not a judge, and neither should the blogsphere be.

Yelllowikis call to boycott Yell’s products is more below the belt than Yell’s cease and desist. I may have even donated to their defence, but not now that I read that.  

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