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The recent case of Pinnacle Runway Pty Ltd v Triangl Ltd [2019] FCA 1662 held that not all brands or sub-brands are trade marks. Rather, “style names” can be used by traders provided they don’t serve the function of being a badge of origin.

The Applicant Pinnacle Runway Pty Ltd (“Pinnacle”) claimed the Respondent Triangl Limited (“Triangl”) infringed Pinnacle’s trade mark for the word ‘DELPHINE’ by using it as a “style name” on one of its bikini styles. Triangl argued it wasn’t use as a trade mark as they’d only used the term as a mere ‘style name’.

On this basis, Triangl argued that there was no use ‘as a trade mark’ and accordingly, there could be no trade mark infringement. His Honour agreed.

badge of origin

A fundamental element of a trade mark is that the brand (or in this case a “style name”) must act as a badge of origin i.e. something that will distinguish the goods of one trader from another.

Here it was held that Pinnacle didn’t establish that Triangl’s use of DELPHINE amounted to use ‘as a trade mark’.

The key factual consideration supporting this finding was that numerous fashion retailers in Australia had also used DELPHINE as a style name in conjunction with a brand name e.g. Lorna Jane, French Connection, Surfstitch, etc.

In essence this meant that the name DELPHINE (or any other women’s name) wouldn’t be seen by a consumer as referring to any one trader in particular, but would rather be seen as a ‘style name’ differentiating one garment range (or product line) from another within the one collection (in this instance the Triangl collection).

Additionally, it was noted that customers were only exposed to the DELPHINE ‘style name’ (shown below), after they’d accessed the Triangl website. Therefore, it was unlikely that any consumer would consider the DELPHINE ‘style name’ to be used as a badge of origin.

This decision is somewhat contentious on a number of grounds:

  1. It’s not uncommon for, and it’s an established principal of trade mark law that, two trade marks can be used together (i.e. a house mark and sub-brand).
  2. There are very peculiar facts supporting this judgment (particularly relating to women’s fashion labelling) and it’s likely the decision will be constrained to very similar facts in future decisions.
  3. Justice Murphy heavily analysed the context of the use – in taking into account how and when the word DELPHINE would be shown to customers, i.e. the prominence of the word looking at its size, font and colouring; it was held the use of DELPHINE was unremarkable and showed it was not heavily promoted itself, but simply used to refer to specific clothing items without designating any particular origin (this role was done by the prominent use of TRIANGL).

The outcome could have been different if the garments were sold through third parties under the brand DELPHINE simpliciter (i.e. without the dominant presence of TRIANGL) or via a course of trade that didn’t require the customer to see DELPHINE as a ‘style name’. e.g. coming across the garments in a department store together with similar garments sold by various other traders.

use of wayback machine and internet extracts as evidence

Another important legal principle considered in this case was the use of screenshots obtained from (i) the internet; and (ii) internet archive websites, including Wayback Machine.

With respect to internet extracts, Murphy J held that, contrary to previous authorities, these documents fall within the business records exception in s69 of the Evidence Act and are therefore admissible.

There is now strong support that internet extracts showing the product name, description and price will constitute a business record.

With respect to internet extracts obtained from internet archive websites, Murphy J held that the previous decisions treating this as hearsay are to be distinguished where an employee of the internet archive website has provided evidence on the operation of the relevant internet archive website (in this instance Wayback Machine) and where such archiving and retrieval process didn’t involve human input.

Accordingly, where there is no relevant human input in the archiving and retrieval of webpages, it will be deemed not to be hearsay evidence, and is admissible. This is an important development in being able to rely on internet archive websites for past appearances of websites.

key take aways 

  1. ‘Style names’ are not trade marks
  2. Internet extracts can constitute business records and be admissible as evidence provided they show the product name, description and price
  3. Internet extracts obtained from internet archive websites are admissible as evidence provided there is no relevant human input in the archiving and retrieval of webpages

 

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when brands are not trade marks

10 December 2019
mark metzeling colin hanns

The recent case of Pinnacle Runway Pty Ltd v Triangl Ltd [2019] FCA 1662 held that not all brands or sub-brands are trade marks. Rather, “style names” can be used by traders provided they don’t serve the function of being a badge of origin.

The Applicant Pinnacle Runway Pty Ltd (“Pinnacle”) claimed the Respondent Triangl Limited (“Triangl”) infringed Pinnacle’s trade mark for the word ‘DELPHINE’ by using it as a “style name” on one of its bikini styles. Triangl argued it wasn’t use as a trade mark as they’d only used the term as a mere ‘style name’.

On this basis, Triangl argued that there was no use ‘as a trade mark’ and accordingly, there could be no trade mark infringement. His Honour agreed.

badge of origin

A fundamental element of a trade mark is that the brand (or in this case a “style name”) must act as a badge of origin i.e. something that will distinguish the goods of one trader from another.

Here it was held that Pinnacle didn’t establish that Triangl’s use of DELPHINE amounted to use ‘as a trade mark’.

The key factual consideration supporting this finding was that numerous fashion retailers in Australia had also used DELPHINE as a style name in conjunction with a brand name e.g. Lorna Jane, French Connection, Surfstitch, etc.

In essence this meant that the name DELPHINE (or any other women’s name) wouldn’t be seen by a consumer as referring to any one trader in particular, but would rather be seen as a ‘style name’ differentiating one garment range (or product line) from another within the one collection (in this instance the Triangl collection).

Additionally, it was noted that customers were only exposed to the DELPHINE ‘style name’ (shown below), after they’d accessed the Triangl website. Therefore, it was unlikely that any consumer would consider the DELPHINE ‘style name’ to be used as a badge of origin.

This decision is somewhat contentious on a number of grounds:

  1. It’s not uncommon for, and it’s an established principal of trade mark law that, two trade marks can be used together (i.e. a house mark and sub-brand).
  2. There are very peculiar facts supporting this judgment (particularly relating to women’s fashion labelling) and it’s likely the decision will be constrained to very similar facts in future decisions.
  3. Justice Murphy heavily analysed the context of the use – in taking into account how and when the word DELPHINE would be shown to customers, i.e. the prominence of the word looking at its size, font and colouring; it was held the use of DELPHINE was unremarkable and showed it was not heavily promoted itself, but simply used to refer to specific clothing items without designating any particular origin (this role was done by the prominent use of TRIANGL).

The outcome could have been different if the garments were sold through third parties under the brand DELPHINE simpliciter (i.e. without the dominant presence of TRIANGL) or via a course of trade that didn’t require the customer to see DELPHINE as a ‘style name’. e.g. coming across the garments in a department store together with similar garments sold by various other traders.

use of wayback machine and internet extracts as evidence

Another important legal principle considered in this case was the use of screenshots obtained from (i) the internet; and (ii) internet archive websites, including Wayback Machine.

With respect to internet extracts, Murphy J held that, contrary to previous authorities, these documents fall within the business records exception in s69 of the Evidence Act and are therefore admissible.

There is now strong support that internet extracts showing the product name, description and price will constitute a business record.

With respect to internet extracts obtained from internet archive websites, Murphy J held that the previous decisions treating this as hearsay are to be distinguished where an employee of the internet archive website has provided evidence on the operation of the relevant internet archive website (in this instance Wayback Machine) and where such archiving and retrieval process didn’t involve human input.

Accordingly, where there is no relevant human input in the archiving and retrieval of webpages, it will be deemed not to be hearsay evidence, and is admissible. This is an important development in being able to rely on internet archive websites for past appearances of websites.

key take aways 

  1. ‘Style names’ are not trade marks
  2. Internet extracts can constitute business records and be admissible as evidence provided they show the product name, description and price
  3. Internet extracts obtained from internet archive websites are admissible as evidence provided there is no relevant human input in the archiving and retrieval of webpages