THE ONE AND ONLY YELLOW PAGES - 209885

• Administrative Decision Number: 209885
• Date: 16 October 2008
• opponent: TRUVO BELGIUM COMM. V.
• Section: Trade Marks Act, 1996 - 2008-2017

1

DECISION OF THE CONTROLLER OF PATENTS, DESIGNS AND TRADE

MARKS IN PROCEEDINGS UNDER THE TRADE MARKS ACT, 1996

BETWEEN

YELL LIMITED1

Applicant

and

TRUVO BELGIUM COMM.V.

Opponent

CONCERNING

the Opponent’s request to amend the notice of opposition filed against

Trade Mark Application No. 1996/04015 (209885)

THE ONE AND ONLY YELLOW PAGES

Background

1. On 24 June, 1996, British Telecommunications plc, a British company of 81

Newgate Street, London EC1A 7AJ, England (predecessor in title of the

Applicant) filed with the Controller documents purporting to be applications for

the registration of the words THE ONE AND ONLY YELLOW PAGES as a

trade mark in respect of a range of services in Classes 35, 38, 41 and 42. At the

time, the registration of trade marks was governed by the Trade Marks Act, 1963,

which did not provide for the registration of marks in respect of services.

However, the Trade Marks Act, 1996 (“the Act”), which does so provide, had

been enacted but not yet commenced and the Controller agreed to accept the

documents filed and to hold them in abeyance pending the commencement of the

1 an English company of Queen’s Walk, Oxford Road, Reading, Berkshire RG1 7PT, United Kingdom

2

Act. The Act was subsequently brought into operation by Ministerial Order dated

27 June, 1996 with 1 July, 1996 fixed as the commencement date.

2. Upon commencement of the Act, the documents filed by the Applicant were

treated as applications made under the Act and were accorded filing dates of 1

July, 1996. The applications were subsequently merged into a single application

(under No. 1996/04015) pursuant to Rule 29(2) of the Trade Marks Rules, 1996

(“the Rules”). The merged application claims a right of priority pursuant to

Section 40 of the Act based on an application for registration of the same mark

filed in the United Kingdom on 1 May, 1996. The application was examined in

accordance with the provisions of the Act and was accepted for registration, and

advertised accordingly under No. 209885 in Journal No. 1869 on 28 July, 1999, in

respect of the following services:

Class 35: Business advisory, consultancy, research and information

services; compilation, provision, storage and retrieval of

business and commercial information; marketing,

promotional and advertising services; data processing and

database services; production, preparation and presentation

of advertising matter; compilation of business directories;

market analysis and research; compilation and transcription

of data; preparation of business reports; sales promotion;

database management services; interactive database

information services direct mail advertising services;

compilation of direct mailing lists; database, on-line and

internet information, advisory and consultancy services all

relating to the aforesaid services; all included in Class 35.

Class 38: Telecommunications services; digital communications

services; services for the collection, transmission, processing

and storage of messages and data; remote data access

services; electronic data interchange services;

telecommunication of information (including web pages),

computer programs and any other data; provision of

telecommunication access and links to computer databases

and to the Internet; data communications services;

communication by computer terminals; services for the

transmission, provision or display of information for

business or domestic purposes from a computer-stored data

bank or via the Internet; on-line information services;

advisory services, provision of information and preparation

of reports, all relating to telecommunications;