The High Court recently considered a claim bought by Thomas Pink, a well-known quality shirt maker, against Victoria’s Secret’s UK operations, relating to the trade mark infringement case of Thomas Pink’s “PINK”.
Thomas Pink Ltd, established in London in 1984, owned a figurative Community Trade Mark (CTM) and UK Trade Mark for “PINK”, registered for various goods in Class 25 (clothing, footwear and headgear).
Victoria’s Secret, an American mass-market lingerie retailer, recently expanded their operations to Europe and in doing so, opened stores in the UK under the PINK sub-brand, which was launched in the US in 2004. The company used the brand to diversify into a wider range of casual clothing and associated accessories, often using the word PINK in prominent positions on both their clothing and shop fronts.
One of the central legal arguments in the case related to confusion in the mind of the public. Thomas Pink had evidence of numerous examples whereby Victoria’s Secret’s lingerie buying customers had tried to return goods to Thomas Pink’s shirt stores. Thomas Pink also suggested that use of its trade mark by an American lingerie label was likely to tarnish its traditional luxury brand image.
It is common for Defendants to Trade Mark Infringement claims to argue that the trade mark in question is not validly registered on the basis that one or more of the absolute grounds for refusing registration can be shown.
In their defence, Victoria’s Secret set out a number of arguments against the validity of Thomas Pink’s mark. In particular, they claimed that the word “PINK” was descriptive and could not therefore be used validly as a trade mark. They also claimed that parts of Thomas Pink’s registrations should be revoked for lack of use.
The Court held that Victoria’s Secret’s use of the PINK brand on its clothing and shop fronts had infringed Thomas Pink’s trade mark rights under ss.10(2) and 10(3) of the Trade Marks Act 1994 (“the Act”).
s.10(2) of the Act provides that an infringement occurs where there is use of an identical or similar sign for similar goods or services, or a similar sign for identical goods or services, if there is a likelihood of confusion. Confusion must be as to the trade origin of the goods.
The Court was satisfied from Thomas Pink’s evidence that the ordinary consumer was indeed likely to be confused by similarities between the companies’ respective branding.
s.10(3) of the Act specifies that an infringement occurs where there is use of an identical or similar sign for goods or services, whether identical, similar or dissimilar, if the use is detrimental to, or takes unfair advantage of, the distinctive character or repute of the mark.
The Court ruled that use of the PINK label by Victoria’s Secret was detrimental to Thomas Pink on the basis that consumers might confuse the two brands and be disappointed by their mistake.
The High Court were unconvinced by Victoria’s Secret’s submissions as to the validity of the Claimant’s trade mark. They held that the mark was valid under s.3(1) of the Act since, although the mark PINK was devoid of distinctive character or consisted exclusively of signs or indications that could serve to designate the kind, quality or other characteristics of the goods, the word had acquired distinctiveness given its extensive use by Thomas Pink.
The Court also dismissed Victoria’s Secret’s argument of non-use, finding that Thomas Pink had used the PINK branding on the vast majority of its goods even though it was not precise to the original registered trade mark.
The decision is useful for any fashion brand operators and retailers adamant on protecting their brand trade marks against other brands, even where brands operate in varying market segments. The use of witnesses to demonstrate confusion was interesting but should not be relied upon by claimants as it was used to prevent Victoria’s Secret from suggesting that there was no confusion rather than to support the claimant’s argument directly.
Victoria’s Secret is likely to appeal the decision due to the substantial implications this will have for its expansion plans in the UK and Europe.
For specialist advice in relation to intellectual property and trade mark infringement cases, contact Leigh Ellis on +44 20 7353 1770.
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