In a recent decision, the Federal Court of Australia found that the name given to a style of bikini was not a trade mark.

Pinnacle Runway Pty Ltd (“Pinnacle”) owns Australian trade mark registration no. 1705228 for the mark DELPHINE in respect of clothing, headwear and swimwear in class 25, and designs, manufactures and sells women’s clothing under this mark.

Pinnacle brought an action for infringement against Triangl Limited and Triangl Group Limited (“Triangl”) on the basis of Triangl’s marketing and sale of a bikini, in three different floral patterns, by reference to DELPHINE. Triangl denied infringement on the basis that it only used DELPHINE as a style name and not “as a trade mark”.

Triangl also cross-claimed that Pinnacle’s registration should be cancelled on the basis that Pinnacle was not the owner of the mark (i.e. the first to use and/or apply for the mark in Australia) in respect of the relevant goods.

The judge dismissed both claims, finding that:

  • there was no infringement as Triangl did only use DELPHINE as a style name and not as a trade mark; and
  • Triangl did not establish the use by another person, before the priority date of Pinnacle’s registration, of a mark substantially identical to DELPHINE in respect of the relevant goods.

A mark is used “as a trade mark” if its purpose is to distinguish the particular trader’s goods from the goods of other traders, namely to function as a badge of origin.

The judge accepted that style names are commonly used in the industry and that they make it easier for businesses and customers to refer to particular products, rather than using a style number or code. Pinnacle itself used style names, including women’s names, in respect of its products and these names even included marks which had been registered by other traders in respect of class 25 goods. Both parties submitted evidence to the effect that style names are of no real value and are not generally remembered by consumers.

Pinnacle’s infringement claim relied on Triangl’s use of DELPHINE (a) on its website and (b) in emails to customers and prospective customers who had set up an account via its website.

The judge noted that:

  • the pages on Triangl’s website which showed the word DELPHINE were dominated by the TRIANGL word mark and/or logo, whilst the word DELPHINE appeared in the same font size as the names of the three floral patterns for the product;
  • consumers navigated through the website via drop-down menus which listed 35 style names and their variants;
  • the emails likewise were dominated by the TRIANGL logo while showing DELPHINE less prominently and/or with another style name or a description of the style/pattern;
  • it was likely that viewers of the website and emails would perceive TRIANGL as the source of the bikinis and not DELPHINE or any of the other style names.

The judge also noted the general difference between the use of a name to distinguish products within a brand or company (e.g. a style name) to the use of a name to distinguish the products of one company from another’s (a trade mark).

Some further points of interest from this decision are that:

  • Certain evidence in the form of screenshots of webpages were deemed to fall within the “business records” exception to the hearsay rule in section 69 of the Evidence Act 1995 (Cth), as they referred to product names, descriptions and prices which were recorded in the course of, or for the purposes of, the business and this information was likely to be reliable. The fact that the screenshots were accessed via the Wayback Machine/Internet Archive did not render them inadmissible hearsay, as the screenshots were retrieved by the WaybackMachine/Internet Archive automatically and without human input.
  • The judge stated that the proceedings brought by Pinnacle were “ill-advised” and that even if Pinnacle had been successful, any damages awarded would have been far outweighed by the legal costs it incurred in bringing the infringement proceeding. The alleged infringement only occurred over a six-week period and the total revenue made by Triangl was less than $40,000. Triangl ceased the allegedly infringing use soon after receiving Pinnacle’s letter of demand and before the proceeding was filed. Pinnacle also had only a modest reputation and could not show that it had actually lost any sales due to the alleged conduct.

This case is a useful reminder that not every product name will necessarily be a trade mark. It also highlights the importance of properly assessing whether infringement proceedings are warranted, particularly where the conduct in question has ceased.