from Aardvark (a local news commentary site of variable quality)
Telecom Seek Arrest Warrant For Use Of "Yellow" On The Web
As mentioned yesterday, the situation over the use of the colour yellow
and the term "yellow web pages" has escalated.
Auckland Net entrepreneur Henk Klos today waits in his Huapai home for a
knock on the door -- it will likely be the police with a warrant for his
What heinous crime did Henk commit?
He crossed Telecom and dared to question their claim to have exclusive
rights to use the colour yellow on the Web.
Henk is the man behind the www.yellowweb.co.nz, a website that Telecom
alleges has infringed two of their trademarks -- the colour yellow and
the phrase "yellow web pages."
In April, Telecom managed to obtain an interim injunction against Yellow
Web Ltd, effectively ruling that they had to stop the use of those
alleged trade marks. Henk's response to this injunction was to offer his
web site for sale -- initially to Telecom and then to other parties.
According to Henk, the Yellow Web site was bought by an offshore entity
which now owns and operates it -- so he claims he's no longer culpable
for the ongoing alleged trademark infringements.
According to a "notice of application for leave to issue writ of arrest
and/or writ of sequestration" issued by Telecom's lawyers on Wednesday,
clearly Telecom does not agree and they want Henk put behind bars for
In his reply to the Telecom writ, Henk asserts that the phrase "Yellow
Web Pages" is not a registered trademark -- which is true, but
unfortunately a trademark doesn't have to be registered to be considered
enforceable. I guess the judge will have to decide whether it's excluded
from trademark protection under Section 24 of the act.
In respect to Telecom's claim of trademark over the colour yellow on the
Web -- the veracity of this claim is yet to be tested and other parties,
such as Trade & Exchange, are actively engaged in legal action to
challenge Telecom's assertion.
An Extremely Interesting Situation
Regardless of the rights and wrongs of the parties positions in this
matter, the claims of Henk Klos raise a very interesting and potentially
challenging precedent for the legal system.
If the Yellow Web site has been sold to an overseas operator, could
Telecom enforce its alleged trademarks on that operator?
I wonder why the owners of the New Zealand Yellow Pages or New Zealand
Yellow websites don't seem to have incurred the wrath of Telecom? Too
expensive? Too hard?
If Telecom are prepared to leave these sites unmolested by its
land-sharks then surely they're going to have trouble protecting their
alleged Net trademarks against exploitation by other overseas-based but
NZ-targeted operators. To retain trademark protection, the owner has to
assert the rights that those trademarks offer in a regular and
consistent manner me thinks. Allowing these other sites to use the
alleged trademarks unchallenged must surely weaken their claims for
trademark protection and their case against Henk.
Will they perhaps only enforce their claims on those overseas sites
which attempt to sell services to NZ-based customers?
Will they simply pick on only those who are not in a position to
properly defend themselves?
The borderless operation of the Net threatens to open a whole new can of
As an aside, I wonder why NZ.com changed the URL
http://nz.com/webnz/GoldPages/ to point to their Platinum Pages? Was
"gold" a little too close to the colour yellow for somebody?
Fault On Both Sides
However... Henk has himself to blame in some respects.
Firstly, he could have perhaps avoided crossing sabres with Telecom by
placing a simple advisory message on all his web pages. Something like:
"This Is Not The Telecom Yellow Pages"
would have effectively removed any doubt in the mind of a visitor who
might have been confused by the alleged similarity to Telecom's offering
and scuttled Telecom's claims of "passing off."
Henk should have also invested a few dollars in trying to register the
trademarks "yellow web pages" or "yellow web." This would have given him
a measure of protection against Telecom's claims -- or at least alerted
him to the fact that Telecom would not let such a claim go unchallenged.
It's also worth remembering that the key to success on the Net is not in
trying to duplicate that which is already out there -- but through the
development of new and better ideas, concepts and implementations. The
very fact that there are so many "yellow pages" websites on the Net
makes it almost impossible for "a little guy" to gain any significant
share of this market anyway.
Simpson's first rule of Net-success: "Don't compete -- create new
markets and own them."
The Bottom Line
Until the lawyers have finished spending large amounts of their client's
money we won't really know whether it's safe to use the colour yellow or
the term "yellow web pages" on an NZ website.
In the meantime, anyone contemplating the development of a site using
either of these alleged trademarks would be advised to:
1. make sure the site is hosted offshore
2. set up an off-shore trading entity to run it
3. ensure your personal assets are in a trust
4. consider doing something more original
What do you think?
Quite frankly I don't think Telecom has anything to fear from other
online business directory sites. Telecom has: "critical mass", a hugely
powerful marketing machine, a massive sales force and a pretty damned
good website. To harass Henk Kloss to the point of seeking his arrest
smacks of petty-minded vindictiveness of the worst kind -- truly the
attitude of an organisation which survives on the strengths of its
I find it more than a little unjust that an offshore company can use the
alleged Telecom trademarks on the Web with impunity while an NZ business
or individual will come under an expensive legal attack for doing the
Henk has made a lot of fundamental mistakes in the way he's gone about
things, which is a shame because if Telecom are able to establish a
precedent through obtaining a successful prosecution in Henk's case it
could make it far more difficult for other NZ entities to challenge
Telecom's claimed monopoly on the colour yellow and the phrase "yellow
Doubtless this story will soon get picked up by the mainstream media so
if readers would like to voice their comments in the Aardvark Forums
I'll try to direct other news sources to them. Hopefully this will
ensure they can accurately report the opinions of Net users and the
industry (or am I doing ISOCNZ's job for them here? :-)
The Trademark Act
Just A Few Other Yellow Pages Sites
Yellow Pages Power Search http://www.yellow.com/
Yellow Pages Superhighway
New Zealand Yellow http://w3serv.com/webs/busynp/frameset/main.htm