Pinnacle Runway Pty Ltd v Triangl Limited  FCA 1662 (10 October 2019)
Unsuccessful application for infringement by Pinnacle and unsuccessful cross-claim for cancellation by Triangl.
This matter is concisely summarised by Murphy J in the opening paragraph of his Honour’s judgment, namely “these are ill–advised proceedings in respect of alleged trade mark infringement and cancellation of a trade mark, and there is no clear winner”. Actuate Legal represented Pinnacle and Corrs Chambers Westgarth represented Triangl.
Over a 6 weeks period, Triangle marketed a bikini under its TRIANGL brand and the name DELPHINE which Pinnacle alleged infringed its trademark registration for DELPHINE dating from 6 July 2015. This conduct occurred on Triangl’s website, Facebook and Instagram social media accounts, three electronic direct mail communications and a press pack sent to a public relations business. Triangl contended it used DELPHINE as a “style name” and not as a trade mark. The total revenue generated by Triangl was less than $40,000 and Triangl agreed to desist from the allegedly infringing use before the proceeding was filed by Pinnacle. There was no evidence that Pinnacle had lost any sales and Pinnacle was a young brand at the time, having been operating for less than a year. Indeed, during the relevant period, Pinnacle did not market any swimwear under the DELPHINE trade mark, but did sell leotards and bodysuits. Murphy J agreed with Triangl and found that its use of DELPHINE was not trade mark use and so there was no infringement. His Honour accepted Triangl’s evidence that style names are commonly used to assist customers to distinguish between different products sold by a trader and that many other brands in the women’s swimwear industry adopted style names because it is more convenient than using a model or style number. Pinnacle itself used style names, including women’s names, in relation to its DELPHINE branded products.
In its cross-claim, Triangl alleged that Pinnacle was not the first user of the DELPHINE trade mark and its registration should be cancelled, but could not adduce admissible and probative evidence to support this and so Murphy J also dismissed its cross-claim.
Murphy J summarised the sad affair as “this unfortunate litigation involved substantial expenditure of the parties’ and Court resources and, for reasons which are unclear, the parties were unable to reach a commercial settlement.”
Pinnacle’s evidence included screenshots taken from the Triangl website during the relevant period, but it was selective and his Honour considered it did not provide the full context in which a person viewing the Triangl website in the relevant period would have seen and understood the pages on which Pinnacle’s case relied.
Triangl also introduced evidence showing its manner of use of DELPHINE on its website as reproduced below. These screenshots were taken after the relevant period.
Triangl also sought to rely on screenshots from its website taken from the Internet Archive Wayback Machine for the purpose of showing that consumers in Australia were used to seeing women’s names used as style names in relation to women’s fashion, including women’s swimwear. Pinnacle objected to this. Murphy J considered contemporaneous screen shots fell within the business records exception to the hearsay rule. His Honour noted that selling goods or services online is now one of the most common methods by which retail commerce is undertaken, and the terms of the transaction are those set out on the website of the business. It is appropriate to treat the content of a webpage that sets out the product name, description and price as a business record. However, the admissibility of archived web pages produced from the Wayback Machine is more complicated. Previous cases have held that such evidence is inadmissible, but there was no evidence as to the operation of the Wayback Machine. Here, Triangl introduced evidence from an employee of the Internet Archive to the effect that the archived records are machine generated information and not representations made by a person which are hearsay. His Honour found that it is reasonably open to find that the Wayback Machine, if properly used, ordinarily produces the webpage that the machine automatically archived on an earlier date. It is to be presumed that the machine produced that outcome unless evidence is adduced sufficient to raise doubt about the presumption and Pinnacle did not do so. His Honour also did not consider this evidence ought to be excluded on discretionary grounds or otherwise limited. Hence, this evidence was admissible for the purpose that each screenshot shows that as at the date recorded the relevant website advertised an item of women’s apparel or swimwear using a woman’s name as a style name.
As it turned out, nothing really turned on this evidence ruling because, having regard to the other evidence, Murphy J was satisfied that up to and including the relevant period consumers in Australia were used to seeing women’s names used as style names in relation to women’s fashion, including women’s swimwear.
Pinnacle relied on expert opinion evidence to the effect that an ordinary Australian consumer is very likely to perceive DELPHINE to be a brand or sub-brand of the TRIANGL brand, but Murphy J did not find his opinion persuasive as it was not rooted in the reality of the women’s fashion industry.
After considering all of the evidence, his Honour concluded that “it is likely that consumers would understand that Triangl offered a range of bikini styles for sale, each with a name, including a bikini style named DELPHINE, which was available in three colours and floral patterns. It is likely that they would understand that TRIANGL was the trade source of the bikinis. It is unlikely that they would perceive that DELPHINE (or the other style names such as PALOMA, LOTTE, BIBI) operated as badges of origin.”
Triangl sought to cancel Pinnacle’s DELPHINE trade mark registration on the ground that Pinnacle was not the owner because other parties had made prior use of a substantially identical mark. However, Murphy J dismissed this due to lack of admissible and probative evidence.
Triangl relied on prior use of DELFINA by Delfina Sport, but the evidence was insufficient to satisfy his Honour that prior to 6 July 2015 Delfina Sport marketed or sold swimwear in Australia under and by reference to DELFINA as a trade mark. A post dated 15 January 2015 on Delfina Sports’ Facebook page was inadmissible hearsay and not a business record. A photograph of a woman wearing a swimsuit with DELFINA written prominently on the front was undated and also inadmissible hearsay. A screenshot from Delfina Sports’ website taken in April 2018 was also inadmissible and not a business record. A spreadsheet showing Delfina Sports’ sales under the Delfina brand from January 2015 through 2016 was admissible as a business record, but of low probative value and was excluded under discretion due to the danger of prejudice to Pinnacle.
Triangl also relied on prior use of DELFINA SPORT in the form shown below by Delfina Sport
However, Murphy J did not consider this mark to be substantially identical to DELPHINE so as to defeat Pinnacle’s claim to ownership.
Triangl also relied on prior use of DELPHINE by the online retailer The Iconic in relation to jackets, but Triangl ultimately accepted that such use was not trade mark use, rather use of DELPHINE as a style name.
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