No, (Most) Style Names Are Not Trademarks, Says Australian Court

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image: Triangl

In the spring of 2016, when Triangl Swimwear was barely 4 years old and bringing in over $45 million in annual sales, while also passing the 1 million mark in terms of the number of color-blocked neoprene bikinis it had sold, the wildly popular and heavily-copied brand caught the attention of a fellow Australian company. Pinnacle Runway Pty Ltd, the owner of a burgeoning young womenswear brand called Delphine the Label, filed a trademark infringement lawsuit against Triangl, claiming that the burgeoning swimwear label was running afoul of the law by selling a bikini style called “Delphine.”  

According to a complaint filed with a federal court in Victoria, Australia in July 2016, Pinnacle alleged that a few months prior, Triangl had taken to marketing and selling a bikini using the style name Delphine. The glaring issue with that, Pinnacle asserted in its complaint: it holds a federal trademark registration in Australia for the word “Delphine” for use on “most types of clothing, headwear and swimwear,” and by using the “Delphine” name in connection with the sale of swimwear, Triangl was likely confusing consumers about the source of its swimwear.  

Responding to Pinnacle’s suit in September 2016, Triangl argued that it wasn’t actually engaging in trademark infringement by selling “Delphine” bikinis because it was not using the “Delphine” name in a trademark capacity. In other words, it was not using the name to indicate of the source of the bikinis (i.e., the Triangl brand as a whole). Instead, counsel for Triangl claimed that the brand was using “Delphine” as a style name in order to “assist consumers in distinguishing” a single bikini style from “its various [other] bikini styles.” 

Far from an unheard of practice, Triangl’s legal team pointed to a larger industry norm of “ascribing a style name to [individual garment and swimwear styles].” More than that, Triangl presented evidence of  “the widespread use of women’s names as product names in the women’s fashion industry.” 

With that in mind, Triangl argued that “consumers [are] used to the practice” of assigning names to styles of garments and swimwear, and that “its use of the name ‘Delphine’ was unlikely to be perceived by consumers as distinguishing Triangl’s goods from the goods of other [brands],” the latter of which is purpose of the use of trademarks – from brand names to logos. And the court agreed. 

In a lengthy decision dated October 10, Judge Murphy of the Federal Court of Australia held that “Pinnacle failed to establish that Triangl used, or intended to use [the term] ‘Delphine’to distinguish its goods … from goods or services [of] other [companies].” Put another way, the company “did not establish that Triangl’s  use of ‘Delphine’was use as a trademark,” which is required in order for a there to be actionable trademark infringement. 

The court’s decision, although limited in case law relevance to courts in Australia, is more broadly significant as comes on the heels of a seemingly growing number of cases filed in the U.S. in which trademark holders are asserting infringement claims in connection with style names. This summer, for instance,  a Los Angeles-based company that business as LUSH filed suit against budding yoga apparel company ALO for using the word “Lush” on certain products, such as including its “Lush Bra,” “ALOSoft Lush Bra,” and “High-Waist Lush Short.” That case is currently underway in California’s Central District Court.

Before that, Kylie Jenner was sued for allegedly using another beauty brand’s trademark-protected “Born To Sparkle” slogan for a single shade in a larger Kylie Cosmetics’ collection of liquid eyeshadow. Alabama-based Sheree Cosmetics has argued in the ongoing case that Jenner is “likely confusing consumers to believe they are buying the genuine, original BORN TO SPARKLE cosmetics from [Sheree Cosmetics]” instead of a product from Jenner’s wildly successful eponymous beauty venture.

The plaintiffs’ assertions in those cases – as well as in the Pinnacle v. Triangl case – stand at odds with the established tenet trademark law only provides protection for words, symbols, product shapes, logos, etc. that identify the source of goods or services; it does not protect uses – such as descriptive or decorative ones – that do not have source-identifying functions. 

For instance, as highly-cited treatise McCarthy on Trademarks and Unfair Competition states, "[W]ords … used as designations of a particular style … [are] not valid trademarks if they do not serve the function of identifying and distinguishing the goods … of [one] seller from those of others." This has been understood to extend to product style names, particularly in the fashion and beauty industries, where the use of style names is widespread and often seasonal in nature, often making such usage short-term in nature. 

There are certainly some exceptions; Louis Vuitton’s “Speedy” bag style, for instance, which the brand has made and offered for sale since the 1930s (and sells under that style name to this day), and for which it has maintained federal trademark registrations in the U.S. since 2006. Even more well-known: Birkin, the name of Hermès’ most iconic handbag offering, and chances are, the most well-known and famous bag in the world. 

Due to the sheer popularity of the Speedy and Birkin bags on a large scale and the uniform use of those style names across the respective brands’ specific styles, the product names, themselves, have gained trademark significance (i.e., they serve to identify the sourceof the products and not just to indicate the name of the product, itself), but that is, of course, not the norm for the typical style name.  

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