August 1st, 2014

Thomas Pink wins battle over the PINK trade mark

The High Court of England and Wales has ruled in favour of Thomas Pink, the UK luxury shirt-maker, in its claim for trade mark infringement against US lingerie giant Victoria’s Secret regarding the use of the mark PINK.

In a judgment delivered by Mr Justice Colin Birss yesterday, Victoria’s Secret was found to have infringed Thomas Pink’s trade marks for “PINK”. As reported in Business Week shortly after the judgment was handed down (click here to view), Mr Justice Birss ruled that consumers in Europe might come to associate the traditional luxury shirt-maker with mass-market goods and underwear, which would cause detriment to the repute of its brand. “For example consumers are likely to enter one of the claimant’s shops looking for lingerie and be surprised and disappointed when they find they have made a mistake”, Birss J said.

The current case was brought by Thomas Pink in response to the opening by Victoria’s Secret of two London stores, one of which stocks its “college girl” range of clothing, lingerie and accessories branded PINK, a range which was already widely available in the USA. The High Court considered four different types of use of the PINK brand by Victoria’s Secret, as illustrated below:

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The Court found that use of the mark on garments and on store fronts (uses 3 and 4) infringed Thomas Pink’s trade marks. Other uses which combined “PINK” with the well-known “Victoria’s Secret” mark (namely in-store signage, labels and swing tags, represented by use 2) were unlikely to result in confusion, although they still amounted to an infringement as a result of causing damage to the distinctive character and reputation of Thomas Pink’s trade marks. Use of the sign VICTORIA’S SECRET PINK on the defendant’s Facebook page did not infringe. As regards use 1 in general, Thomas Pink denied that such mark had ever been used in the course of trade within the EU, an argument which was upheld by the Court.

In its defence, Victoria’s Secret sought to invalidate Thomas Pink’s registrations on the basis that the mark PINK was descriptive and had not acquired distinctiveness. Thomas Pink’s UK and CTM registrations are both device marks and they therefore argued that those marks were not exclusively descriptive. Notwithstanding this, Birss J agreed that given the nature of the mark PINK, it needed to have acquired distinctiveness to remain on the register. Crucially, however, he held that the mark had in fact acquired a distinctive character and was therefore validly registered.

Victoria’s Secret’s counsel further argued that elements of Thomas Pink’s registrations should be revoked for non-use. While the Court agreed that there were some goods within Thomas Pink’s specification where there had been no genuine use, the vast majority of the goods were not revoked since there had been use (albeit by reference to a mark in a slightly different form to that registered). Mr Justice Birss commented that, “Proprietors do not always and consistently use a mark in precisely the form as registered. This is recognised in s. 46(2) which permits minor variations to be taken into account in order to avoid revocation of the mark”.

Victoria’s Secret had sought to rely on the fact that the two brands have been co-existing on the US market for many years without confusion. However, Birss J held the position was different on the European market, where it was likely that the average consumer would be confused by the mark PINK being emblazoned on the defendant’s clothing. The presence of the well-known mark VICTORIA’S SECRET on some of those goods did not avoid infringement, due to the prominence of the word PINK which was strongly associated with the claimant.

One interesting part of the judgment relates to the evidence of confusion adduced by Thomas Pink employees. Thirteen members of staff gave evidence recounting incidents where members of the public appeared to be confused, but none of the consumers themselves gave evidence. Birss J commented that “the claimant’s evidence of actual confusion is not of sufficient weight to lend any significant positive support to the claimant’s case but it does play an important negative role in this action. Its existence is sufficient to prevent the defendant from credibly contending that there is no evidence of actual confusion in the UK or the EU”. Historically, English courts have been very strict about how consumer evidence can be adduced in trade mark cases. The acceptance by the Court of this kind of evidence, albeit the limited probative value of it, will be welcomed by brand owners who often find it hard to convince members of the public to get involved in Court proceedings.

Birss J’s judgment confirms that confusion between trade marks (including by way of association) can be found to arise even where the fashion brands target very different segments of the market. Fashionista predicts that this is unlikely to be the end of the story, with either a further appeal here, and/or further proceedings over the pond unless the parties can use yesterday’s judgment to form the basis of a co-existence agreement.

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