Pinnacle Runway Pty Ltd v Triangl Limited  FCA 1662 (10 October 2019)
Pinnacle Runway Pty Ltd (“Pinnacle”) owns a trade mark registration for DELPHINE in relation to: “clothing; headwear; swimwear” in class 25 and sells women’s clothing under this trade mark. Pinnacle brought an action against Triangl Limited (“Triangl”) for infringement of its registration for the DELPHINE trade mark because Triangl had used DELPHINE as a “style name” for marketing and selling its swimwear. However, the Federal Court ultimately decided that Triangl’s use of DELPHINE was use of a style name, but not use of DELPHINE as a trade mark. As a result, the Court dismissed Pinnacle’s claim because Triangl’s use of the style name DELPHINE for swimwear was not infringement of Pinnacle’s DELPHINE trade mark registration.
For infringement of a trade mark registration to occur, the infringing use must be use “as a trade mark,” and this was a crucial issue in this case. Use as “a trade mark” is use of a sign to distinguish goods or services dealt with or provided in the course of trade from the goods or services of provided by other traders (Section 17 of the Trade Marks Act 1995 (Cth)). Triangl acknowledged that it had marketed and sold a bikini style in Australia in three different floral designs under the TRIANGL trade mark using the style name DELPHINE, but its defence was that it did not use DELPHINE as a trade mark. Triangl said that it used the TRIANGL trade mark to distinguish its swimwear products from those of other traders, but used DELPHINE only as a style name to assist consumers to differentiate its numerous bikini styles from each other.
The Court accepted Triangl’s evidence which showed that during the relevant period, there was a widespread practice in the women’s fashion industry in Australia of using style names in relation to women’s fashion garments, including swimwear, and that women’s names are commonly used as the style names to distinguish the different styles from each other. The Court was therefore satisfied that during the relevant period consumers were used to the practice of style names, particularly women’s names as style names, and consumers would therefore be unlikely to perceive DELPHINE as distinguishing Triangl’s goods from the goods of other traders. Justice Murphy dismissed Pinnacle’s claim and said, “Pinnacle failed to establish on the balance of probabilities that Triangl used, or intended to use DELPHINE to distinguish its goods dealt with or provided in the course of trade from goods or services so dealt with or provided by another trader. It did not establish that Triangl’s admitted use of DELPHINE was use as a trade mark and it therefore did not make out its case of trade mark infringement.”
When Triangl put on evidence to demonstrate that there exists a widespread practice in the women’s fashion industry in Australia of using style names, particularly women’s names, it sought to rely on screenshots from websites of a range of swimwear and fashion brands taken from online searches undertaken on the Internet archive the Wayback Machine. The screenshots taken from the archived pages of the relevant websites available on the Wayback Machine over the period 2012 until June 2016 were presented by Triangl to show that on various dates over the relevant period the swimwear and fashion brands had used women’s names as style names.
Prior to this case, the Australian Courts have found evidence taken from the Internet Archive the Wayback Machine to be inadmissible on the grounds of hearsay. However, it is interesting to note that in this decision Justice Murphy accepted the evidence, and found that the contents of the screenshots presented which were taken from the Wayback Machine that set out the product name, description and price of each business, were a “business record” which fall within the business records exception to the hearsay rule (section 69 of the Evidence Act 1995 (Cth)). Triangl also submitted that the screenshots were in fact from the date on the screenshot, and each screenshot was a digital copy of the webpage that existed on the relevant website of the fashion brand on the date specified. Justice Murphy when considering this noted, “the Wayback Machine copied the relevant webpage into its archive and recorded the date on which it did so, and that the page retrieved from its archive is the same page which existed on that date – is only hearsay under s 59 [of the Evidence Act 1995] if the archiving and retrieval process involved human input. That is, that a person or persons was involved in copying and uploading the page to the Internet Archive database or later retrieving it for production.” In addition, Triangl put forward evidence from the office manager at the Wayback Machine to establish that the archiving and retrieval of webpages by the Wayback Machine does not involve human input, as its data is compiled using software programs known as “crawlers” that surf the Internet, and the software automatically stores copies of the website pages, preserving them as they exist at the point in time they are captured. As a result of this evidence, Justice Murphy found that the Wayback evidence did not constitute hearsay because the archiving and retrieval process did not involve human input, which allowed Triangl to rely on the screenshots to prove that each relevant webpage existed on the particular date recorded by the Wayback Machine.
This decision highlights that a style name or product name will not always be a trade mark, and determining whether trade mark infringement has occurred will require careful consideration of the specific facts of each case.
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By Erin Cassidy