Pinnacle Runway Pty Ltd v Triangl Limited  FCA 1662 (10 October 2019)
Question: When is a name that is used to distinguish, not being used to distinguish?
Answer: When it is a style name
In Federal Court proceedings Pinnacle Runway Pty Ltd (“Pinnacle”) alleged infringement of its trade mark registration for DELPHINE by Triangl Group Ltd (“Triangl”). The allegation concerned the use of that word in relation to bikinis.
The key 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 present case concerned a fundamental clash over whether and when a name is being used as a trade mark. 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.
Pinnacle presented evidence from a marketing consultant and lecturer in marketing concerning brand architecture and perceptions. It claimed that sub-brands function as trade marks and 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. His evidence was that there is common use of ‘style’ names simply to distinguish the different collections sold by traders, rather than to indicate origin.
It was claimed that typically the business’ principal brand, in this case TRIANGL, performed the role of distinguishing the trader’s goods from the goods of others, not the style names used.
DELPHINE was used on Trangl’s website, with varying degrees of prominence, in contexts such as:
The Court was persuaded by the industry evidence. In concluding that DELPHINE was not being used by Triangl as a trade mark, it took into account factors such as:
- Evidence from Triangl that it did not intend to use the name to distinguish its 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 colours 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 consumer 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 4 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”.
Additional Evidentiary Issue – Wayback Machine
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 was accepted on the basis of being a document produced without human intervention.
The case breaks new ground and challenges perceptions of what a trade mark is, and when a name is functioning as a trade mark.
The case creates additional uncertainty for parties seeking 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 principal or ‘house’ brand.
Whether a name is being used as a style name (or something akin to a style name) rather than being used as a trade mark, will depend upon the circumstances of each case, and it is an issue that will likely give rise to considerable debate.
The case is presently the subject of an appeal, and assuming it proceeds to a decision, the result will be closely watched.