Facts
The case of Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662 (10 October 2019) considered whether Pinnacle’s trade mark DELPHINE, which was registered in class 25 for clothing, headwear and swimwear, was infringed by use of the word DELPHINE as a style of one of Triangl’s bikinis. 

Triangl sold a range of approximately 35 styles of bikini over the Internet.  These were all displayed on a page of its website when the “View All” button was clicked.  Each bikini would appear above the style name for that bikini. One of these styles was called DELPHINE.  Clicking on the “New Arrivals” button of Triangl’s website would take a consumer to a selection of four new bikini styles – PALOMA, LOTTE, BIBI and DELPHINE.  

Triangl’s DELPHINE bikini was sold in three colour/pattern variants – FIORE, FIORE ROSA and FIORE NERO.  One internal page of its website showed all three variants with the words DELPHINE FIORE, DELPHINE FIORE ROSA and DELPHINE FIORE NERO in small writing.  Clicking on the DELPHINE FIORE ROSA bikini image displayed the following internal page.

Triangl also sent direct email communications to three persons who had signed up on its website.  These communications included the following image:

Pinnacle claimed that these uses of the word DELPHINE infringed its trade mark registration.

Evidence showed that, within the women’s fashion industry, style names, which were frequently female names, were used as product names because this was more convenient than using a number or code.

Decision
Justice Murphy held that there was no trade mark infringement of Pinnacle’s mark because Triangl had not used DELPHINE as a trade mark.

Reasoning
The Pinnacle case is a demonstration of the principle that, for trade mark infringement, context is all-important.[1]  At first blush, the way the word DELPHINE is used in the two images above looks like use as a trade mark.  It is not used as a description.  It is capitalised and prominent.

Pinnacle’s marketing evidence referred to TOYOTA which has sub-brands such as YARIS, COROLLA and RAV4.    A consumer may refer to any of these without using the corporate brand name TOYOTA.  However, the Judge considered that the situation was different in the fashion industry, where many hundreds of products are named after women’s names.  There was also evidence that consumers do not remember fashion style names and only remember the head brand.   A similar situation arises for different colours of paints and different styles of carpets and other floor coverings. 

Justice Murphy held that consumers were likely to scroll through Triangl’s numerous bikini styles on its website, showing their different style names, and understand that Triangl offered a range of bikini styles, each with a name, including DELPHINE, but that TRIANGL was the source of the bikinis.  His Honour rejected the argument that DELPHINE and the rest of the 35 names were sub-brands like YARIS, COROLLA and RAV4. 

Justice Murphy commented that, in Triangl’s marketing, the word DELPHINE was never used without the brand TRIANGL.  Normally this would not assist a defendant as it is well established that use of an infringing mark as a trade mark in conjunction with the defendant’s trading name does not avoid infringement.  (This can, however, be relevant to the separate action for passing off.[2])

However, the critical issue was whether DELPHINE was used as a trade mark.  Section 17 of the Trade Marks Act 1995 (Cth) provides:

 A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

His Honour considered that Triangl did not use DELPHINE as a trade mark, or badge of origin, to distinguish Triangl’s bikinis from the bikinis of other traders, but rather to differentiate between products within the Triangl brand. 

Use as a trade mark
“Use as a trade mark” is probably the most difficult concept in trade mark law.  It is hard to explain to a client how a word exactly the same as the registered trade mark that appears in relation to goods exactly covered by the registration (as was the case here) does not infringe a mark.[3]

All cases turn on their own facts.   The manner of use of the allegedly infringing mark in its context must be analysed carefully. Is it used to show that goods or services come from a particular source, even if the source is not known, or is it used for some other purpose, such as a description or, as here, as a code to identify a style?  The distinction recognised by Justice Murphy between a style and a trade mark can be difficult to draw and Pinnacle has appealed this decision.  The Full Court decision will be very interesting if the matter proceeds to a hearing. 


[1] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 (26 July 1963) Kitto J [4].

[2] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147.

[3] See for example Re Johnson and Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited [1991] FCA 310 (the CAPLETS case).

Categories: Consumer law