Transport directory infringed Yellow Pages trade marks, court finds

Yell holds the UK trade marks for the words 'yellow pages' and a walking fingers logo, and has built a significant enough public reputation for an online user to identify the signs with the company, the court said.

The infringing website, which lists contact information for transport businesses, was at least partly targeting users in the UK, the court said.

A second website, www.zagg.eu, must also remove the words 'yellow pages' and the walking fingers logo from its pages, the court said.

"Yellow Pages and the walking fingers logo are well known brands in the UK. The public associates the words and the logo with [Yell's] business," Judge Birss said.

"The actions of [transport-yellow-pages.com and zagg.eu] are the acts of Mr Giboin or of entities over which he retains detailed and specific control," the judge said.

Both websites provide the same transport business directory and advertising services to customers but under different address, the court said. The function of the websites is the same as the function of Yell's own websites, which its trade marks were registered to represent, the judge found. Giboin argued that neither the words 'yellow pages' nor the walking fingers logo are distinctive to Yell. He argued that reference to both 'yellow pages' and the walking fingers logo are used by online directories registered in other countries, including the US, Australia and Azerbaijan.

"There is no evidence before me of substantial public awareness of the usage elsewhere in the world of the terms Yellow Pages and the logo. In my judgement it is perfectly obvious that many people will have encountered that usage via the internet and websites like www.yellowpages.com however there is no evidence those sites offer a service directed at the UK and in my judgement there is no reason to think that the distinctiveness of Yellow Pages or the walking finger logo in the public mind here has been eroded in any way," Judge Birss said.

Giboin said that the two websites were owned and controlled abroad. "There is no law that a company situated abroad but using a website to commit infringing acts in this jurisdiction escapes liability," Judge Birss said.

The zagg website did not contain the words 'yellow pages' in its address, but promoted Yell trade marks on its pages to the extent that the public could mistake the site for Yell's, the judge said.

Gibion, Zagg Ltd and Zagg Global were also guilty of passing off because they misrepresented Yell's trade marks and damaged the significant goodwill and reputation Yell receives in the UK by using the trade marks on their websites, the court said.