Tickled Pink – Thomas Pink wins Trademark case against Victoria’s Secret over use of ‘PINK’

August 29, 2014

Decision

The High Court has ruled that lingerie brand Victoria’s Secret’s use of the brand ‘PINK’ in the EU infringes the trade marks of retail luxury clothing business Thomas Pink Limited.

Background

In Thomas Pink Ltd v Victoria’s Secret Ltd [2014] EWHC 2631 a claim was brought for trade mark infringement by Thomas Pink, which had been trading in London since 1984.  Its business was primarily in the sale of shirts worn by professionals, particularly men, and the word PINK was also used on its products.  Thomas Pink had registered UK and Community Trade Marks in a range of classes for retail services and goods, including clothing.

The defendant was part of the famous Victoria’s Secret lingerie group, which launched sub-brand PINK in the United States in 2004.  The brand was aimed at ‘college girl’ females between 18 and 25 and diversified beyond lingerie and related goods into clothing more generally.  The defendant sought to introduce the PINK brand into the UK.

The case involved a number of issues including the likelihood of confusion between the brands and whether the UK trade mark had acquired distinctiveness as a result of its use.  Thomas Pink argued that customers had tried to return Victoria’s Secret goods in its stores and that some had asked to buy PINK goods, only to be surprised to learn that they did not stock lingerie.  In the context of the Community Trade Mark claim, reputation and detriment were also considered.

Mr Justice Birss ruled that Victoria’s Secret’s use in the EU of PINK both on its goods and as the name of its stores was an infringement of the registered trade marks of Thomas Pink and that Victoria’s Secret’s use of PINK would cause a detriment to the repute of Thomas Pink’s mark.

Comment

Thomas Pink is now seeking an EU-wide injunction to prevent any further infringement by Victoria’s Secret.   The case may yet go to appeal or a co-existence agreement may be reached by the parties.

A key commercial lesson of the case is to conduct extensive searches when moving into new territories, even where brands are established and well known in their original jurisdiction.

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