Can a bikini style name infringe a Trade Mark?
Oct 18, 2019Can a bikini-style name infringe a trademark? This is an issue which the Federal Court of Australia addressed in a 2019 decision involving Pinnacle Runway.
The parties
- Pinnacle Runway Pty Ltd (“Pinnacle”) designs, manufactures, supplies and sells women’s clothing in Australia and overseas under the registered trade mark Delphine. At the relevant time, it had been operating for less than a year. Its reputation was “only budding”;
- Triangl Limited (“Triangl”) designs, manufactures, supplies and sells women’s swimwear in Australia and around the world under the registered trade mark, Triangl. It marketed and sold a bikini style under the name Delphine as a “style name”.
The allegations
- Pinnacle alleged that Triangl infringed its registered mark during a 6 week period from 24 April 2016 to 2 June 2016, and sought damages for “loss of reputation” as a trade mark (see section 126(1)).
- By way of cross-claim, Triangl alleged that Pinnacle’s registration of the Delphine mark should be cancelled (pursuant to section 88 of the Act) on the basis that Pinnacle was not the first to use it (relying on evidence of a pre-existing brand name of Delfina, as used by Delfina Sport).
Background facts
- Triangl admitted it marketed and sold a bikini style under name Delphine, but denied using Delphine “as a trade mark”. It put on evidence to show that it was a common practice within the industry to use women’s names as style names, and suggested 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.
- The alleged infringing use ceased within 3 weeks of Pinnacle’s letter of demand.
- Triangl agreed to desist from allegedly infringing use (by renaming the subject biking to “Delilah”) before the proceedings were commenced against it by Pinnacle.
- The total revenue made by Triangl during the relevant period was $40,000 – Pinnacle was unable to establish that it had lost any sales.
Considerations
- The Court considered evidence in relation to the market for swimwear and bathing suits, and the use of brand names and style names by the parties and other competitors, the prominence of the name Delphine on Triangl’s advertising (including EDM – email direct marketing). It noted that the prominent name on the webpages was Triangl, and that the Delphine mark was in the same (smaller) font size as the names given to different colour and floral patterns – “That is not suggestive of a mark rising to the significance of distinguishing the commercial origin of the goods”.
- The Court also considered the value of evidence of historical screenshots of the relevant websites, using the “Wayback Machine”, and whether the fact that the archival website relied upon human interaction meant that any such evidence was hearsay evidence.
Decision
- The Court criticised Pinnacle for bringing the claim, considering the infancy of the business, the minimal damages suffered, the significant legal costs incurred by Pinnacle in bringing the proceedings (and the significant legal costs incurred by Triangl in defending the proceedings).
- It noted that whether consumers were likely to perceive that Triangl’s use of the Delphine mark operated to distinguish its goods from those of the other traders is an objective one, to be determined from the perspective of the consumer.
- It accepted that Triangl did not intend its use of the Delphine mark to distinguish its products from products dealt with or provided by other traders, but rather as a reference point for consumers to distinguish those bikinis from other styles within its bikini range. It was not so unusual or distinctive to the extent that it is likely to be remembered by consumers and to develop a brand identity in its own right, as contended by Pinnacle.
- It found that Pinnacle did not establish that Triangl’s use of the name Delphine amounted to use as a trade mark under section 120 of the Act, and the claim was dismissed.
- In relation to Triangl’s cross-claim, the Court found that Triangl did not adduce admissible and probative evidence in support of its claim of use in Australia by other traders of a mark having substantial identity with the Delphine trade mark before the priority date of that mark, and dismissed the cross-claim. [Priority date – the date when the first filing is made for a trade mark registration]
- Both the claim and the cross-claim were dismissed.
Contact the Shire Legal team if you have any questions.
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