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A Truly Pink Trademark Battle Won in the High Court

Thursday, 30 October 2014

In July the High Court handed judgment to luxury British fashion retailer Thomas Pink Ltd, ruling that Victoria Secret’s use of a sub-brand “PINK” had infringed Thomas Pink’s trademarks. These included the distinctive use of the capitalised word PINK.

Victoria’s Secret is the largest American lingerie retailer, with an increasing presence in Europe; Thomas Pink earned its reputation for its quality men’s shirts.

The case emphasised important aspects of trademark law which brand owners should bear in mind when it comes to protection and infringement of trademarks.

Judgement in Thomas Pink Ltd v Victoria’s Secret [2014]

The High Court ruled in favour of Thomas Pink for a number of reasons.

The court was clear in making its decision that the average consumer was likely to be confused by the similarities between the signs on the companies’ respective branding. Birss J held that the use of the mark– “PINK” – on Victoria’s Secret garments and store fronts infringed Thomas Pink’s trademarks under s10(2) and 10(3) of the Trade Marks Act 1994 (Art 9(1)(b) and 9(1)(c) of Community Regulation 207/2009 EC.

Thomas Pink had adduced evidence of consumers being confused between the marks, where some customers had attempted to return Victoria’s Secret goods to Thomas Pink stores. Further, Thomas Pink claimed that there was a substantial risk of “tarnishment” of its traditional luxury brand values by the resulting association with the American lingerie label.

In defence, Victoria’s Secret submitted, amongst other things, that Thomas Pink’s marks should be revoked for non-use and that the British company’s trade marks were invalid because the word “pink” was purely descriptive, as a colour.

Although Birss J admitted that the Thomas Pink brand would not be tarnished by association with Victoria’s Secret, he did rule that use of the PINK label by Victoria’s Secret was to the detriment of the British company. Furthermore, he dismissed both the argument that the trade mark was invalid for lack of description, as the word “pink” had acquired distinctiveness via extensive usage over the years, as well as the argument of non-use, finding that in relation to the vast majority of goods there had been use, albeit not in the precise form to that originally registered.

Comment

The decision – if not overturned – will prove a useful precedent to all fashion brand operators and retailers as it enables the increased protection of brand trade marks against other brands despite these brands operating in different market segments.

Victoria’s Secret has been, prior to the decision, expanding aggressively into the UK market, with a flagship store on Bond Street amongst many other stores sporting the latest “PINK” product line. Given the decision, it is expected that Victoria’s Secret will indeed appeal, given the seeming centrality of the PINK product range to their expansion plans in Europe.

For specialist advice regarding trademark infringement or other forms of intellectual property litigation and enforcement contact Peter Gourri today by email PGourri@rollingsons.co.uk or telephone 0207 611 4848.

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