Call me maybe: Trade Mark protection for phone numbers in Australia

In the arena of contemporary business where branding can define market leadership, the strategic deployment of phone numbers is a key yet underutilised tool. A thoughtfully selected phone number can elevate beyond its functional role, transforming into a dynamic brand asset, comparable to a distinctive logo, slogan or domain name. Its consistent presence in marketing initiatives can forge a deep and lasting connection with your brand. Seeking protection of your phone number as a trade mark isn’t merely a branding choice; it acts as a defence against competitor infringement and misuse. This in turn helps to prevent potential consumer deception.

Consider the strategic choices of consumer facing companies such as Domino’s, which transformed its existing phone number into 1300 DOMINOS, and 13Cabs, which incorporated its company name into its contact details. Consumer facing brands like Prestige Moving with 1800 WE STOREIT, 1800 Red Insure by the Coles Group and 1800 GOT-JUNK? by RBDS Rubbish Boys Disposal Service, elevate the use of their phone number to act as branding asset. Far from mere vanity choices, they represent well-considered, strategic investments designed to enhance a brand’s market presence and memorability. For businesses seeking to distinguish themselves in a competitive market, strategically acquiring and safeguarding phone numbers is a crucial aspect of branding and identity formation.

Ownership of phone numbers in Australia

In Australia telecommunications numbers, ie ‘phone numbers’, are deemed national resources, thus falling under the ownership of the Commonwealth of Australia. The governance of this domain is managed by the Australian Communications and Media Authority (ACMA), functioning within the framework of the Telecommunications Act 1997 (Cth). As a result, the Commonwealth holds exclusive ownership over phone numbers, granting licences to service providers who, in turn, allocate individual phone numbers to consumers.

Acquiring a custom phone number

Businesses and individuals have the opportunity to procure custom phone numbers, widely recognised as ‘Smartnumbers’, through ACMA. These Smartnumbers can range from memorable digit sequences, like 1300 456 789, to repetitive digits such as 1300 222 222, or even alphanumeric combinations that correspond to words on a phone keypad, for instance, 13 VETS (13 8387). The acquisition process entails a selection from available numbers on the ACMA platform, coupled with a one-time registration fee and recurring Annual Number Charges.

Custom number pricing framework

The pricing for Smartnumbers is dictated by the Telecommunications (Numbering Charges) (Allocation Charge) Determination 2015. This regulation classifies numbers based on their recall value, assigning prices accordingly. Categories span from ‘Platinum’ for highly memorable numeric patterns, commanding the highest fees, to ‘Standard’ for numbers with minimal or indistinct numeric or word patterns.

Registration, not ownership

It is critical to understand that acquiring a Smartnumber through ACMA does not confer exclusive ownership rights over the number. The right to use the number is retained for three years from the last date of service connection. Post this duration, if the Smartnumber is not renewed, it becomes available for others through ACMA’s numbering system. This system of registration for phone numbers is analogous to that of domain names. Like phone numbers, domain names are not owned but registered for use. The au Domain Administration (auDA) acts in a similar capacity to ACMA allowing the registration for an initial licence period for a fee.

Therefore, while a business or individual cannot own a phone number, like a domain name, they can maintain registration with ACMA and secure their legal rights through trade mark protection. This ensures ongoing exclusive use of the Smartnumber and protects an important brand asset against deceptive use from malicious or infringing actors.

Criteria for trade marking phone numbers

When considering the registration of phone numbers as trade marks, it is imperative to adhere to the requirements of the Trade Marks Act 1995 (Cth) (TM Act) and also understand how trade mark examiners approach such applications. Some crucial aspects to consider, in order to avoid rejection of a trade mark application for a phone number include:

1. Non-descriptive requirement

Numbers that are prevalent and widely recognised in certain industries, like standard clothing sizes (eg Size 8), cannot be registered as trade marks. Their ubiquitous and generic nature across the industry precludes them from serving as unique identifiers. These numbers are considered too common and non-distinctive to be associated exclusively with the goods or services of a single trader. As trade marks are intended to distinguish one trader’s offerings from another’s, using such universally understood numbers fail to meet the criterion of distinctiveness.

2. Distinctiveness

When assessing trade mark applications for phone numbers, IP Australia applies the criteria outlined in the TM Act. Central to this is Section 41, which requires that a trade mark must distinctly identify the applicant’s goods or services from others. Consequently, for a phone number to qualify, it must fundamentally serve to distinguish a trader’s offerings from those of its competitors. If a phone number fulfills this criterion of distinctiveness, it is a viable candidate for trade mark registration.

3. Avoidance of deceptive similarity

A phone number, when submitted for trade mark registration, must not closely resemble existing trade marks to the extent of potentially deceiving or confusing consumers. A critical factor to consider is the ‘class’ under which the trade mark is filed. With a spectrum of 34 classes for goods and 11 for services, the chosen class dictates the scope of protection. As such, any phone number too similar to an existing trade mark in the same class risks misleading consumers, leading to possible rejection of the application.

In summary, for a phone number to be successfully registered as a trade mark, it must not only avoid being descriptive or generic within its industry but also distinctly identify the trader’s brand.

Additionally, it should not closely resemble any existing trade marks, especially within the same class.

Infringement of a phone number

The registered owner of a trade mark holds the exclusive right of use and to authorise use of the trade mark to others.¹ As such, if a business’s phone number is registered as a trade mark, the owner has the right to obtain relief where the trade mark has been infringed. To prove trade mark infringement, it must be shown that:

1. The infringing phone number is substantially identical with or deceptively similar to the registered phone number;² and
2. The infringing phone number is being used in relation to goods or service that are, the same description, closely related or unrelated provided the infringed trade mark is well known in Australia.³

Unregistered trade mark infringement

If a business does not hold a registered trade mark for a phone number and an infringing actor is using a similar number, relief can be sought under the tort of ‘passing off’ and misleading and deceptive conduct under section 18 of the Australian Consumer Law (ACL).

Tort of passing off

To establish an action for passing off three elements are required to be satisfied:

1. Reputation or goodwill attached to the phone number;
2. Misrepresentation; and
3. Damage.

Misleading and deceptive conduct

To establish that conduct is misleading and deceptive conduct for the purposes of ACL, two elements must be satisfied:

1. The conduct occurred in trade or commerce; and
2. The conduct was misleading or deceptive.

Using a similar phone number to that used by another business may be misleading and deceptive. This use could suggest an affiliation between the two entities which may not exist, and this could be deceptive to consumers. This could occur irrespective of the intent behind choosing, or not choosing, the phone number.

Practical examples

In the New Zealand case Glev Pty Ltd v Foodmakers (1992) Ltd (1995) 33 IPR 550 the proprietor of a pizza business obtained an interim injunction restraining use by a competitor of a telephone number incorporating the last digits of the plaintiff’s 0800 free call number, ‘241’ which had been promoted by the plaintiff in conjunction with the slogan ‘two pizzas for one price’.

In that case, Blanchard J referred to the United Kingdom decision of Aldous J in Law Society of England & Wales v Griffiths and Thomas [1995] RPC 16,4 in which the defendants were restrained from using a telephone number which was identical, except for the free call prefix, to the number of the Law Society’s ‘Accident Line’ for personal injury referrals.

In both of these cases the telephone number was the primary source of the plaintiff’s business and featured predominantly in advertising and promotion. Because of this, the plaintiff was successful from restraining a competitor from using similar phone numbers without registering their business phone number as a trade mark.

It is likely that a similar outcome would be reached under Australian law, but this will be very fact specific. If possible, the strongest form of legal protection for a valuable phone is a registered trade mark.

Next steps

HWL Ebsworth’s Intellectual Property & Technology team has extensive experience in advising businesses regarding intellectual property law, consumer law, contract and common law. If you are concerned with how to protect your phone numbers, please contact us for further information on how we can assist you.

This article was written by Luke Dale, Partner, Max Soulsby, Solicitor and Christopher Power, Law Graduate.

¹Trade Marks Act s20(1).
²Ibid ss120(1), 120(2).
³Ibid s120(3).