Kat friend Tyrone Berger reports on a recent case in Australia that addresses the ever-vexing quetion of when use amounts to trade mark use.

In the recent decision of Pinnacle Runway Pty Ltd v Triangl Ltd, the Australian Federal Court has found that the name given to a style of bikini will not amount to 'use as a trademark' so as to consitute trade mark use.

The facts

Pinnacle Runway owns the registered Australian trade mark DELPHINE in respect of clothing, headwear and swimwear in class 25. Pinnacle brought an action for infringement against Triangl and Triangl Group based on Triangl's marketing and sale of bikinis, which included reference to the name ‘Delphine’. Triangl denied any infringement, arguing that it only used Delphine as a style name and not as a trade mark.
                                                                              Did you see that bikini!

Triangl explained that its decision to use the word Delphine came about by--

… a designer Triangl employed at the time came up with the names PALOMA, LOTTE, BIBI and DELPHINE for the four styles in the new collection. … Triangl chose the name DELPHINE along with PALOMA, LOTTE and BIBI as the new style names in line with the informal naming practice … and the four style names chosen were then arbitrarily assigned to the four new bikini styles.

Triangl Group also cross-claimed that Pinnacle's trade mark registration should be cancelled on the ground that Pinnacle was not the first to use the mark in Australia, and therefore it is not the owner of the mark.

A word of warning

Pinnacle's infringement claim relied on Triangl's use of the name Delphine on its website, and in emails to customers who had set up an online account. Murphy J noted that the name Delphine that appeared on Triangl's website was dominated by the TRIANGL mark, and the emails likewise were dominated by the TRIANGL mark while showing the Delphine name less prominently.

Not all use of a particular word or name will constitute use ‘as a trade mark’. In Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19], the Full Bench of the Federal Court held:

Use ‘as a trade mark’ is use of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods ... That is the concept embodied in the definition of ‘trade mark’ in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.

This statement was expressly approved by a majority of the High Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [43].

As for whether a particular use of a name for a product is infringing, the test is an objective one, and the setting or context in which the name is used can be crucial. As Hill J in Aldi Stores Ltd Partnership v Frito-Lay Trading Co GmbH [2001] FCA 1874, [30] stated:

In most, if not all cases, the question whether there has been use as a trade mark will be determined by an objective examination of the use in the context in which it appears.

His Honour, in considering whether consumers would perceive the name Delphine as a badge of origin, stated:

… the context or setting in which consumers viewed the EDMs [electronic direct mail] is important. These direct mail communications were only sent to persons who had taken the active step of signing up to Triangl’s mailing list. That increases the improbability that they would perceive that DELPHINE was being used as a trade mark or as indicating the trade source of the swimwear.

His Honour accepted that style names are commonly used in the fashion industry, and that names make it easier for businesses and customers to refer to particular products, rather than relying on a number or code. His Honour concluded that it was likely that consumers would perceive TRIANGL as the source of the bikinis and not Delphine or any of the other style names. Ironically, both parties submitted evidence in an attempt to argue that style names are of no real value, and are not generally remembered by consumers.

In brief …

Murphy J dismissed both claims, finding that there was no infringement as Triangl did only use the name Delphine as a style name and not as a trade mark, and Triangl did not establish any prior use by another person of Pinnacle's DELPHINE mark. The judge stated that the proceedings brought by Pinnacle were ‘ill-advised’ and that, even if Pinnacle had been successful, any damages awarded would have been far outweighed by the legal costs it incurred in bringing the infringement proceeding.

Photo by haitham alfalah, who grants use thereof for any purpose.