It is common practice for fashion, beauty and design industries generally to use style names to differentiate between their products and lines – think of iconic Hermes’ ‘Birkin’ and ‘Kelly’ bags – which is far more convenient and customer-friendly than applying numerical codes to the products.
These creative industries are very fast-moving, with numerous new products and styles being introduced at least every season – and the designers come up with dozens new style names to go with them. But are there any legal risks in using style names and should businesses conduct trade mark clearance searches to avoid potential claims of trade mark infringement?
The Australian Federal court has recently provided some guidance in this respect.
Pinnacle Runway – a designer and manufacturer of women’s clothing – owns an Australian registered trade mark ‘DELPHINE’ in relation to clothing, headwear and footwear. Triangl Group – that also operates in a womenswear business – used the name ‘DELPHINE’ as a style name of one of their swimsuits. The name ‘DELPHINE’ appeared on their online retail website as well as in the newsletters sent out to their subscribers.
Pinnacle sent a ‘cease and desist’ letter to Triangl alleging that the use of ‘DELPHINE’ style name infringed their trade mark and requesting to cease the infringing use and to pay compensation. Triangl eventually agreed to cease the use of the name in return of Pinnacle dropping their demand for financial compensation, but Pinnacle proceeded to issue proceedings.
Use of style names
The Court ruled that Australian consumers were familiar with the fashion industry’s practice to use style names to differentiate between their products, and Pinnacle itself used style names in relation to their goods.
Given that the name ‘Triangl’ was prominent both on the website and in the newsletter and it dominated the use of the style name ‘Delphine’, the Court found that the consumers were unlikely to perceive the word ‘Delphine’ as a sub-brand of Triangl and instead were likely see it as a style name.
Even though Australian court precedents are not binding on English courts, this decision provides some guidance and comfort to businesses that use style names – but importantly, every case turns on its facts.
Under English law, the trade mark is infringed when, in the course of trade,:
- the same name is used in relation to the same goods or services;
- the same or similar name is used in relation to the same or similar goods or services and there is a likelihood of confusion on the part of the consumers as to the origin of the goods or services;
- a well-known brand name is used in relation to any goods or services so that the infringer is taking an unfair advantage of the reputation of the well-known brand or dilutes or harms the reputation of the well-known brand.
Using a style name that is identical or similar to the existing trade mark in relation to the same or similar products or services may in certain circumstances amount to the trade mark infringement.
Therefore, if you would like to discuss your business’s branding strategy and whether your use of style names could infringe third party rights, please do not hesitate to get in touch with us on firstname.lastname@example.org or 020 72886003 and one of our specialist IP lawyers will be happy to have a consultation with you without charge.
Written by Anastasia Troshkova, Solicitor