Fashion businesses are increasingly using ‘style names’ by way of product line extensions. For example Polo Ralph Lauren® has offered a variety of khaki trousers here in Australia under style names such as ‘Andrew’, ‘Varsity’, ‘Bedford’ and so on. The closer you look, the more often you’ll see this in the world of fashion and home design. And you don’t need to be a trade mark attorney to have noticed that these style names can often overlap, from company to company. Which raises the question: are style names trademarks?
Pinnacle’s Style Name versus Triangl’s Trademark
In a fairly recent Australian case, Triangl Swimwear took competitor Pinnacle Runway Pty Ltd to court over an alleged trade mark infringement. Was Pinnacle’s swimsuit style name ‘Delphine’ an infringement of Triangl’s trademark ‘Delphine’?
In this case, the answer was ‘no’. Put briefly, the court found that Pinnacle was simply using ‘Delphine’ to differentiate among its own products (for example, on its own site or a retailer’s site). Whereas trade mark use is about distinguishing one company’s goods or services from those of another company.
Trademark Advice Is Safer Than Trademark Assumptions
So, are style names trademarks? The more accurate answer is ‘it depends on how you use them’. Remember, in this case the court said Pinnacle’s style name wasn’t being used as a trademark . . . but in other circumstances, it could have been. So while this finding is of comfort to Pinnacle, the real message for clients is to beware of making assumptions about product names and trade mark rights. Much better to speak to your trade mark attorney before launching new products or brands. It is far easier (and much less expensive) to avoid infringement, than to defend it.
Naturally, we’re always happy to have a chat.
p.s. there’s a more detailed review plus some useful background over at The Fashion Law.