In Pinnacle Runway Pty Ltd v Triangl Limited ( FCA 1662, 10 October 2019), Pinnacle Runway Pty Ltd alleged infringement of its trade mark registration for DELPHINE by Triangl Group Ltd. The allegation concerned the use of that word in relation to bikinis.
The essential issue and basis of the ultimate decision is neatly summarised by Justice Murphy:
Triangl admitted that, over a period of six weeks, it marketed and sold in Australia a bikini style in three different ﬂoral designs under the TRIANGL trade mark using the name DELPHINE, but denied using DELPHINE “as a trade mark”. It argued that it employed the TRIANGL trade mark to distinguish its products from those of other traders and it only used DELPHINE as a “style name” so as to assist consumers to differentiate that one of its many bikini styles from its other styles. It put on evidence to show that there is a widespread practice in the women’s fashion industry in Australia of using style names in relation to women’s fashion garments, including swimwear, and that women’s names are commonly so used. Triangl contended that consumers were used to this practice and that its use of the name DELPHINE was unlikely to be perceived by consumers as distinguishing Triangl’s goods from the goods of other traders.
For a trade mark registration in Australia to be infringed, the infringing use needs to be use “as a trade mark”. Consequently, determining whether a name or other sign is used “as a trade mark” is an issue of key importance in any such proceedings.
The case breaks new ground. It creates additional uncertainty for parties trying to enforce trade mark rights and provides a new characterisation of the defence that a name is not being used as a trade mark, when there is also use of a principal or ‘house’ brand.
The case concerned a fundamental clash over when a name is being used as a brand and when it is being used as a “style name”. At the heart of this issue is the view of the court that there will only be use as a trade mark when that use is intended to distinguish the user’s goods from those of other traders. Further to this, the court accepted evidence that various names are used not to distinguish one trader’s goods from those of another, but to distinguish only the different products within a range sold by a particular trader. As indicated above, the court accepted that style names are commonly used to identify different styles of clothing sold by clothing manufacturers.
The alleged infringing use was used in contexts such as:
Pinnacle presented evidence from a lecturer in marketing and a marketing consultant concerning brand architecture and perceptions. It referenced the typical brand architecture hierarchy of:
(a) corporate or company brand, which is the overall or head brand;
(b) family brand, which is a brand that is used in more than one product category but is not necessarily the name of the company or corporation;
(c) individual brand, which is a brand that is restricted essentially to one product category, although it may be used for several product types; and
(d) modiﬁer, which describes a speciﬁc size, ﬂavour, conﬁguration or function of the product.
Triangl presented evidence from a public relations and marketing consultant with experience in the fashion industry concerning the common use of names to differentiate collections, rather than to indicate origin. It was claimed that this function is typically performed by the business’ principal brand, in this case TRIANGL.
The court was persuaded by the industry evidence and, in concluding that DELPHINE was not being used by Triangl as a trade mark, took into account factors such as the following:
- Evidence from Triangl that it did not intend to use the name to distinguish goods from those of other traders, but only to distinguish a particular style of bikini from those within its broader range;
- Whenever DELHINE was used, there was generally more prominent use of TRIANGL;
- Typically, DELPHINE was used in a similar font size as the names given to the different colour and ﬂoral patterns, which is inconsistent with use as distinguishing commercial origin;
- DELPHINE products were generally displayed as part of a wider range of styles with various different names. For example, on the website if the consumers clicked “View All”, they would see images of approximately 35 Triangl bikini styles (all having different names) and if they clicked “New Arrivals”, they would see four new styles.
As a consequence, the court was convinced that consumers would understand that TRIANGL was the trade mark being used to identify the source of the bikinis and that DELPHINE, like other style names, was not being used as a badge of origin or as a ‘sub-brand”. The court emphasised that the context of use is “all important” in assessing such issues and found that use in the present case was not use “as a trade mark”. Whether a name is being used as a style name or sub-brand will depend upon the speciﬁc circumstances of each case. It is no doubt an issue that will give rise to considerable debate in the future.
The case also included an interesting observation on the admissibility of evidence from the Wayback Machine. While this is generally considered hearsay, it has been admitted on occasions as a matter of discretion.
In the present case, Justice Murphy accepted evidence that Wayback screenshots are ordinarily produced automatically. As a consequence, in the absence of evidence to the contrary, it could be accepted on the basis of being a document produced without human intervention.
This article by Shelston IP Principal, Sean McManis, first appeared in World Trademark Review, November 2019.