UK: Thomas Pink Ltd –v- Victoria's Secret UK Ltd

Last Updated: 3 November 2014
Article by Dan Parkes

British retailer Thomas Pink has emerged victorious in its most recent trade mark dispute with American lingerie giant Victoria's Secret in the High Court case of Thomas Pink Ltd v Victoria's Secret UK Ltd [2014] EWHC 2631 (Ch).

Thomas Pink is a well-known retailer, principally of luxury work shirts but also of other clothing, that sells goods under the names Thomas Pink and PINK. It is the proprietor of Community and UK trade mark registrations both of which prominently feature the word 'PINK'.

In 2004 the Victoria's Secret group launched a sub-brand in the USA called PINK. The brand owners sell a wide range of clothing targeted at 'college girls' aged between 18 and 25. Victoria's Secret opened its first European store on Bond Street in London in 2012. It was this European expansion that led to Thomas Pink's claim for trade mark infringement. Victoria's Secret counterclaimed that the marks were invalid and should be revoked for non-use.

Revocation

Under Article 51(1)(a) of the CTM Regulation 207/2009/EC (CTM Regulation) a CTM will be revoked if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

Victoria's Secret successfully contended that a number of categories of goods should be revoked from the specification of the claimant's CTM for non-use: Class 14 was reduced from jewellery and cufflinks to cufflinks; Class 26 was amended to remove buttons; and Class 3 (which contained cosmetics etc.) was revoked entirely. In respect of Class 25 ("clothing, footwear, headgear") Victoria's Secret argued that the registration should be limited to those categories for which genuine use was found and not simply clothing in general, and that the term clothing was inherently unclear. Rejecting this argument on both counts, the court found that not only was the term 'clothing' clear but that the range and variety of items for which Thomas Pink had used the mark justified the description 'clothing'. However, footwear was reduced to wellington boots and headgear was removed entirely.

Distinctiveness of the UK trade mark

Victoria's Secret contended that the UK trade mark registration should be declared invalid since it was not distinctive, contrary to s.3(1) of the Trade Marks Act 1994 (TMA). Section 3(1) of the TMA provides that a trade mark should not be registered if either :

  • it is devoid of distinctive character (s.3(1)(b)); or
  • it consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services (s.3(1)(c)).

Thomas Pink argued that since the trade mark was a stylised form of the word PINK with a particular font, fill and visual element it could not be said to fall foul of either s.3(1)(b) or (c). Victoria's Secret rejected this, instead relying on the case of Starbucks v British Sky Broadcasting [2012] EWHC 301 (Ch) in which a stylised version of the word 'now' was precluded from registration.

Birss J found that the mark did not satisfy either section 3(1)(b) or section 3(1)(c). The mark was predominately the word "pink", which describes a characteristic of clothing, and the font and style of the mark were insufficiently significant to detract from this.

However, the proviso to s.3(1) of the TMA provides that a trade mark will not be refused registration under sections 3(1)(b) or (c) if it has acquired a distinctive character as a result of the use made of it.

Basing their argument on the precise wording of the TMA Victoria's Secret contended that a trade mark could only acquire distinctiveness under the proviso if the mark had been used in a form identical to the mark registered. Whilst agreeing that Victoria's Secret made a 'strong point', Birss J felt there was no reason why European trade mark law should be as restrictive as the defendant's submission suggested, and found that Thomas Pink had made sufficient use of the trade mark for it to acquire distinctiveness.

Infringement

Section 10(2)

Thomas Pink claimed that Victoria's Secret had infringed its mark under s.10(2) of the TMA. Under that section a person infringes a mark if he uses in the course of trade a sign where because:

  • the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
  • the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark registrations.

In assessing the identity of the average consumer, through which the likelihood of confusion is judged, the court held that it should represent a broad spectrum of consumers from all levels of the market. This was contrary to Victoria's Secret submission that average consumers should be divided into consumers of lower-priced and high-end clothing. The court also found that on comparison the marks used by Victoria's Secret were similar to Thomas Pink's trade marks. Accordingly, it was held that a number of Victoria's Secret PINK products and marketing materials infringed Thomas Pink's CTM and UK trade mark.

Section 10(3)

Thomas Pink also alleged infringement under s.10(3) of the TMA. Under this section a person infringes a registered trade mark if he uses an identical or similar sign in the course of trade in relation to goods or services even if they are dissimilar to those for which the trade mark is registered, providing that the trade mark has a reputation in the UK and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark.

Birss J accepted that the mark had the necessary reputation and rejected Victoria's Secret's claim that their expansion into the EU was simply an extension of their business activities in the USA, thus giving them due cause to use PINK branding. He also accepted that the defendant's use of PINK was potentially detrimental to the claimant's mark due to Victoria's Secret's "sexy, mass-market appeal". The court therefore found in Thomas Pink's favour and ruled that the case for infringement under s10(3) had also been proved.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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