11/03/2020

Described by Murphy J as “ill advised proceedings…with no clear winner”, the decision that iconic Australian swimwear brand Triangl did not infringe Pinnacle Runway Pty Ltd’s Australian registered trade mark DELPHINE when it used “Delphine” as a style name for a bikini is, nonetheless an important precedent for brands and online retailers.  

There are few Australian trade mark decisions that focus on how established principles apply in the current and evolving retail environment. Rather than buying products predominantly in bricks and mortar stores, purchases are increasingly made online in the context of direct marketing emails and Instagram posts.  The Court’s recognition of the reality of online fashion retail is an important development that may inform brand protection strategies in Australia.  It makes the appeal filed by Pinnacle late last year one of the top cases to watch in 2020. 


The style name was not used “as a trade mark”


As Triangl had used “Delphine”, a name substantially identical to Pinnacle’s registered trade mark DELPHINE, in connection with goods covered by the trade mark registration (swimwear), it was common ground that Triangl would have infringed Pinnacle’s DELPHINE trade mark unless Triangl could show that it had not used “Delphine” as a trade mark – i.e. to distinguish its products from those of other traders.

The Court’s acceptance that women’s names are commonly used as style names in the fashion industry to conveniently distinguish between different styles sold by the same brand – but not as trade marks – was essential to its conclusion that there was no trade mark use and no infringement.  

As well as being an important source of practical guidance in minimising the risks of trade mark infringement in fashion and other industries that use non-distinctive style names in this way, this is a good example of the Court recognising a specific industry practice with the benefit of the right evidence (with the opinion of Triangl’s fashion and cosmetics industry-focused expert being preferred).  

The finding that evidence from the internet archive The Wayback Machine of third party websites was admissible for this purpose is a key authority for trade mark cases, given other recent adverse decisions in this area and the importance of The Wayback Machine evidence in many brand disputes.


Recognition of the online retail environment

Underlying the finding that there was no trade mark use, and no trade mark infringement, is recognition by the Court of how consumers actually understand and interact with e-commerce platforms.  Part of the reasoning supporting the admissibility of The Wayback Machine evidence was the recognition that a product listing on an online store is much more than just an ad – it “sets out the essential terms of the proposed transaction, which will be completed if the consumer clicks on another button on the website and provides his or her credit card details”.  For that reason, the Court found that the product listing page should be treated as a business record for the purposes of the business records exception to the hearsay rule in the Evidence Act.

Perhaps even more importantly, Murphy J’s reasoning on the trade mark infringement issue focused on how consumers would perceive the screenshots of the Triangl website where the “Delphine” bikinis were offered for sale by Triangl (which has primarily been an online retailer since around 2013).  The features of the website – the dominant TRIANGL mark, a TRIANGL GIRLS button, and the domain name <australia.triangl.com> were noted, in contrast to the use of DELPHINE in the same font size and colour as the names given to the different colour and floral patterns available in the “Delphine” bikini style. Murphy J considered that this was “not suggestive of a mark rising to the significance of distinguishing the commercial origin of the goods”.  

The Court also found that the overall “context or setting in which Triangl used the name DELPHINE on its website is of critical importance”, looking to the content of the home page featuring the TRIANGL mark, as well as the “View All” button and the “New Arrivals” button which would lead consumers to scroll through a range of bikini styles, each with a style name, making it unlikely that DELPHINE would be perceived as a badge of origin.  In relation to the use of DELPHINE on direct email marketing, the fact it was sent only to subscribers to Triangl’s email list was considered by the judge to “increase the improbability that they [consumers] would perceive that DELPHINE was being used as a trade mark or as indicating the trade source of the swimwear”.      

While these points may be obvious to e-commerce businesses and consumers, the subtlety of how consumers interact with and interpret the content of online retail platforms has not yet been widely recognised by Australian Courts in the trade mark context.  The potential application of this type of reasoning to all trade mark disputes involving the internet is significant and, subject to any different approach the Full Court may take if Pinnacle’s appeal proceeds to judgment, indicates an important evolution of Australian trade mark law.  


Instagram and Facebook advertising

An interesting take away from the decision in light of the increasing importance of Instagram as a click-through sales platform is that Pinnacle may have had better prospects of establishing trade mark infringement if it had directly relied on the 12 Instagram and 7 Facebook posts for the “Delphine” bikini, rather than relying on them simply as context for how consumers would perceive the use of DELPHINE on the Triangl website and direct marketing emails. 

These posts described the bikini as “DELPHINE” and “The DELPHINE”, and referred to the model wearing “Fiore Nero” and “Fiore Gallo” (colours in which the “Delphine” style was available).  While probably not enough to change the overall result of the case on their own, this comes much closer to advertising DELPHINE as a sub-brand of TRIANGL.  It indicates an important area to watch for fashion and other industries using style names when advertising products on social media, depending on whether they wish to establish reputation in a style name as a sub-brand, or avoid inadvertently infringing a third party trade mark with a style name that is intended to be merely descriptive.  

Although the decision appears encouraging for businesses wishing to avoid trade mark infringement with style names, it is important to remember that Pinnacle did not have any significant reputation in the DELPHINE brand, and if it did, the outcome for Triangl may have been different. 

Author: Rebecca Smith.

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