Earlier this week my colleague Charles Laughlin wrote about "The Yellow Pages Brand Fight Developing in Germany." In short Deutsche Telekom, the largest communications company in Europe, lost its trademark for the name "Gelbe Seiten" (Yellow Pages), which it registered in 1982. The decision by the German patents and brands office (DPMA) does not go into effect until it is finalized by the Federal Patents Tribunal, which will only be completed after Deutsche Telekom exhausts its appeals. DT has promised a vigorous fight.
Essentially the German trademark office ruled that "Yellow Pages" was a general descriptive term and could be used by anyone. The review came after a lengthy fight by Internet-based company GoYellow Media AG, which has claimed that business directories are called Yellow Pages in nearly 100 countries globally. DT's DeTeMedien unit has taken legal action against several competitors over the past several years, but it has waged a major battle against GoYellow for alleged brand infringement.
The issue is what will be the impact, if any, on other Yellow Pages trademarks around the world? I posed this question to the distinguished trademark attorney Dennis J. Helms, of counsel to Flaster Greenberg. He told us that it means both a little and a lot. Trademarks are granted on a country-by-country basis and what happens in one country or even one region has no legal impact on what could happen in another country. On the other hand, Mr. Helms told us that there could be a domino effect. Should the decision be upheld, it will be cited by others and will be used as a way to bring pressure on a country's trademark board. It could also be seen as a way to reduce monopolies and potentially lower costs.
In the U.S., AT&T never applied for a trademark for the term Yellow Pages or the walking fingers logo, but the RBOCs and other utility publishers were able to maintain their strong position by controlling access to listings. Even if the trademark is lost, database ownership and access will still be a huge barrier to entry in most countries.