Australia - Itsy Bitsy Teenie Weenie Non-infringing Triangl Bikini: Federal Court Finds That Swimwear Style Name Is Not "Use As A Trade Mark".

Legal News & Analysis - Asia Pacific - Australia - Intellectual Property

6 January, 2020

 

Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 720.

 

What you need to know

 

  • The Federal Court of Australia has found that use of a style name for a range of bikinis did not constitute use as a trade mark and therefore did not amount to trade mark infringement.  
  • In an industry where adopting style names is commonplace, except in exceptional circumstances, use of a style name does not constitute use as a trade mark where the name is only being used to distinguish between the goods offered within the same brand. 
  • The decision also clarified when historical screenshots of webpages can be accepted as evidence.  

 

What you need to do

 

  • Consider whether the industry in which you operate commonly uses names (or other words, numbers or symbols) to differentiate between goods or services offered under a brand.
  • Where you intend to use a name only as a differentiator (eg a style name) and not as a trade mark, using your "house" branding in a dominant way with the style name may assist with demonstrating that the name is not being used as a trade mark itself.
  • If you are wanting to protect a style name, make sure you are also using it "as a trade mark".

 

Background

 

Pinnacle Runway Pty Ltd (Pinnacle) designs, manufactures, supplies and sells women's clothing in Australia and overseas under the registered trade mark DELPHINE (the DELPHINE Trade Mark).  The second respondent and cross-claimant, Triangl Group Limited (Triangl) designs, manufactures, supplies and sells women's swimwear in Australia under the registered trade mark TRIANGL (the TRIANGL Trade Mark). 

 

Pinnacle brought an action for trade mark infringement against Triangl for marketing and selling a bikini style in three different colours under the name DELPHINE.  Triangl argued that it only used the name DELPHINE as a "style name" to assist consumers in distinguishing between its bikini styles.  Triangl also filed a cross-claim seeking to cancel the DELPHINE Trade Mark on the basis that Pinnacle was not the first to use the mark in Australia in respect of clothing, headwear and swimwear.  

 

Are style names "use as a trade mark"?

 

It was not disputed that Triangl used the name DELPHINE on its website, social media pages and in electronic direct mail (EDM) to advertise a style of bikini for a six week period between April and June 2016. 

 

However, Triangl argued that this use did not constitute use as a trade mark, which must be demonstrated under section 120(1) of the Trade Marks Act 1995 (Cth) to establish infringement. To constitute use as

a trade mark, the DELPHINE name must have been used to distinguish Triangl's swimwear from those of other traders. 

 

Triangl put on evidence (including expert evidence) that style names, and in particular women's names, were commonly adopted in the fashion industry to act as a reference point to enable customers to distinguish a product from the range offered within the same brand. Triangl also argued that it adopted up to 35 different style names for its bikini styles and that its process of choosing those names was informal.  Furthermore, the TRIANGL Trade Mark was centrally and prominently positioned on the webpages and EDMs where the DELPHINE bikinis were advertised and where the infringement was alleged to have taken place. 

 

Justice Murphy accepted the evidence of Triangl, and in particular that women's names were commonly used in the fashion and swimwear industry.

 

Justice Murphy considered that the context or setting in which Triangl used the name DELPHINE was of critical importance, and held that consumers would have viewed the prominently positioned TRIANGL Trade Mark either on the home page or other webpages when purchasing Triangl DELPHINE bikinis.  His Honour also found that consumers would have seen multiple bikini styles offered under different style names on the website, and accordingly it was unlikely that they would perceive DELPHINE (or the other style names) to operate as a badge of origin.  

 

While Pinnacle's expert sought to argue that Triangl used DELPHINE as a sub-brand, Justice Murphy did not accept this argument as this was at odds with the reality of marketing in the industry and would mean that each of Triangl's 35 bikini styles that adopted a style name were all being used by Triangl as sub-brands. Justice Murphy considered that consumers would not perceive each style name to be a separate sub-brand.  Justice Murphy found that Triangl used the DELPHINE name to identify and differentiate between its products withinits brand, which did not constitute use as a trade mark.

 

Cross-claim for cancellation

 

While Justice Murphy did not need to consider Triangl's cross-claim because infringement was not established, he still did so in the event that his finding on infringement was held to be wrong.  His Honour held that Triangl did not establish that Pinnacle was not the first trader in Australia to use DELPHINE as a trade mark in relation to clothing, headwear and swimwear and therefore dismissed the cross claim.

 

Wayback Machine historical evidence

 

Justice Murphy also considered the admissibility of historical screenshots from websites retrieved from the Wayback Machine. Triangl sought to rely on this evidence to demonstrate that other traders used women's names in relation to swimwear styles. 

 

Justice Murphy held that historical screenshots from websites retrieved from the Wayback Machine can be admissible evidence.  In particular, because the webpages showed the terms of a transaction (including the product name, description and price) they fell within the "business records" exception to the hearsay rule under section 69 of the Evidence Act 1995 (Cth).

 

In addition, his Honour accepted the evidence of a representative of the Wayback Machine that the webpages are retrieved by the Wayback Machine using software programs that surf the Internet and automatically store copies of website files without human input. 

 

Accordingly, they were found to be admissible because they could not be said to be representations made "by a person" (which is required for the evidence to amount to hearsay under the Evidence Act).

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For further information, please contact:

 

Lisa Ritson, Partner, Ashurst
Lisa.ritson@ashurst.com