In the Pink! Thomas Pink v Victoria's Secret

The English High Court recently ruled that the use by Victoria’s Secret (“VS”) of the term PINK as a trade mark for a range of clothing aimed at females between 18-25 infringed European Community and UK registered trade marks owned by the famous Jermyn Street shirt maker, Thomas Pink (“TP”).  The ruling was based on likelihood of confusion, detriment to repute, and detriment to distinctive character (dilution).

TP began trading in London in 1984, building up a reputation in its mark PINK especially in relation to men’s shirts.  In 2004, VS launched its PINK sub-brand in the U.S. for, e.g. t-shirts, sweatshirts, lingerie and swimwear.  In 2012, VS started using the mark PINK in the UK, including opening stores branded PINK some of which  were inside, or adjacent to, a Victoria's Secret store. Sometimes this use was accompanied by less prominent use of VICTORIA’S SECRET. The neck labels or swing tags of all VS's garments included VICTORIA’S SECRET.

During the case, the rights of TP in its marks were closely examined as to the distinctiveness of the word PINK and the range of goods which ought to enjoy protection under the registrations.  The way each party used PINK was also scrutinised.

VS sought partial non-use revocation but Mr Justice Birss found that TP was justified in retaining its CTM registration in respect of the broad term “clothing”, since it had  used its mark on shirts, blouses, polo shirts, socks, jumpers, cardigans, trousers, dresses, skirts, jackets, pyjamas, boxers/underwear, ties, scarves, handkerchiefs, gloves and belts.  However, TP’s registration for "footwear" was revoked to “wellington boots”.  In Class 14, TP was able to retain its registration for “cufflinks”, but not for “jewellery”.

TP’s UK registration was registered on the basis of distinctiveness acquired through use.  VS’s invalidity attack over the distinctiveness of the registration was dismissed.  Although the word PINK was, on the face of it, descriptive and non-distinctive in respect of clothing, it had acquired distinctiveness as a result of the long and extensive use made of it by TP.

There was limited evidence of actual confusion.  This was only significant in that it prevented VS from credibly contending that there had been no confusion.

The Judge held that the respective marks were very similar.  In an interesting departure from earlier case law, he found that towels were “similar” goods to clothing, and that perfumes and clothing were complementary (and therefore similar goods) at the luxury, not mass, end of the fashion market, a point accepted by both parties. He also held that flip flops and wellingtons were similar goods. He found that there was a likelihood of confusion where VS used PINK on goods and on its shop fronts, but not where it used the word on swing tags and labels alongside VICTORIA’S SECRET. 

As to detriment to repute, the Judge found a link between the brands which was bound to cause a change in the economic behaviour of TP consumers. He felt that the link would lead to the TP mark being associated with a sexy, mass market offering , reducing its luxurious repute which might reduce sales. He also found that over time the VS use would dilute the TP brand so that consumers might enter one of the TP shops looking for lingerie and be surprised and disappointed when they found they had made a mistake.

Joseph Letang, Partner

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