Bikinis from Way-back-when

By Rob Vienet
Intellectual Property Patents & Trade Marks

In brief 3 min read

In the recent Federal Court decision of Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662, Justice Murphy weighed into the Wayback debate: 'Are screenshots obtained from the "Wayback Machine" admissible as evidence?'. By admitting screenshots of this kind into evidence (on certain conditions), the court sanctioned further use of the Wayback Machine. It also made an important distinction between use of a sign as a trade mark and use of a sign as a style name.

Key takeaways

  • A sign is not used as a trade mark if it fails to distinguish products of one trader from those offered by other traders. In the context of fashion products, use of a sign to distinguish one style from another within a brand's range does not necessarily constitute trade mark use. Signs used in this way may be immune from trade mark infringement proceedings but vulnerable to removal from the Register for non-use.
  • Litigants seeking to tender evidence from the Wayback Machine should provide evidence that explains the machine-generated archiving and retrieval process involved.

Who in your organisation needs to know about this?

Marketing teams, in-house counsel involved in trade mark issues and those involved in litigation.

Trade mark litigation way off the mark


Pinnacle Runway Pty Ltd and Triangl Limited are clothing competitors. Generally, Pinnacle uses the registered trade mark 'DELPHINE' to promote its clothing, whereas Triangl uses the registered trade mark 'TRIANGL'. For a short period, however, Triangl also used the word DELPHINE to reference one bikini style in its own TRIANGL range (see below). The primary issue: did Triangl's use of DELPHINE as a style name amount to use as a trade mark and therefore infringe Pinnacle's trade mark registration?


Trade mark claim 'not worth the powder and shot'

The court concluded that Triangl did not use DELPHINE as a trade mark. Triangl used DELPHINE as a style name to distinguish between different products offered under its own TRIANGL brand, but not as a trade mark to distinguish its products from other trader's products. This was largely because Triangl did not separately promote a DELPHINE range of products. The court took into consideration the fact that use of the DELPHINE style code was subject to Triangl's more prominent use of the TRIANGL brand, which consumers would perceive as the clothing's badge of origin.

A way around the hearsay rule for Wayback evidence

Triangl also adduced evidence from the Wayback Machine to prove that consumers in Australia were accustomed to seeing women's names as style names in women's fashion.

The 'Wayback Machine' is a website that archives various pages of the internet at various points in time. The archived pages can later be accessed through a search functionality. Due to the hearsay rule, some recent decisions have excluded from evidence screenshots obtained from the Wayback Machine.

In this case, an employee of the Wayback Machine gave evidence that the archive is compiled automatically from software programs (ie without human input). Therefore, the screenshots did not offend the hearsay rule because there was no representation 'by a person'. Previous courts that have weighed into the Wayback debate have not been provided with equivalent evidence. Thus, providing evidence of the Wayback Machine's automated operation is an important measure when relying on evidence from the archive.

Actions you can take now

  • Marketing teams, particularly those in the fashion industry, should consider whether they are using signs as trade marks or as style names.
  • Litigants seeking to rely on the Wayback Machine in evidence should tender an affidavit from an employee of the Internet Archive that explains the automation process underpinning the archive.

Note, Pinnacle has appealed the Pinnacle v Triangl decision (VID1179/2019).