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Case update on Thomas Pink v Victoria's Secret UK Limited [2014] EWHC 2631 (Ch)

Amy Reynolds
18/08/2014
SummaryThomas Pink has successfully brought a trade mark infringement action against Victoria's Secret for its use of the word "Pink".  Whilst Victoria's Secret attempted to raise a number of defences Summary

Thomas Pink has successfully brought a trade mark infringement action against Victoria's Secret for its use of the word "Pink".  Whilst Victoria's Secret attempted to raise a number of defences including revocation for non-use, and attacking the validity of the marks for descriptiveness and lack of distinctiveness, ultimately none of these came to its rescue.  Of interest in this case was the evidence of actual confusion adduced by Thomas Pink in support of its trade mark infringement claims.  The judge was of the view that it played an important negative role i.e. it prevented Victoria's Secret from credibly contending that there was no evidence of actual confusion in the UK or EU.

Background

In 2012 Victoria's Secret, well known for its famous line of lingerie, opened in the UK its first store branded "PINK", a sub-brand that it had launched previously in the US and represented a diversification from lingerie and related goods into clothing at large.

Thomas Pink Limited, the famous UK shirt maker, objected to this and alleged that Victoria's Secret's acts amounted to passing off and infringement of its CTM and UK trade mark for PINK devices under s.10(2)/Art.9(1)(b) and s.10(3)/Art.9(1)(c) of the Trade Marks Act 1994/Community Regulation 207/2009 EC.

Thomas Pink argued that the average consumer was likely to be confused by Victoria Secret's use of PINK as a primary sign on its garments, and submitted evidence of actual consumer confusion, including the example of consumers attempting to return Victoria's Secret goods to its own stores.

In support of its s.10(3)/Art. 9(1)(c) claim, Thomas Pink argued that there was a risk that its traditional brand values would be tarnished by association with a lingerie label, which had a very different brand message and had been involved in several scandals over the years.

In defence, Victoria’s Secret argued that Thomas Pink's UK trade mark was invalid under sections 3(1)(b) and 3(1)(c) of the Trade Marks Act 1994 because the word "pink" was purely descriptive and further, the mark could not acquire distinctiveness as Thomas Pink had never used the mark in exactly the same form in which it was registered.

Victoria's Secret also argued that Thomas Pink's CTM should be revoked for non-use. In particular, Victoria's Secret argued that Thomas Pink could not justify a registration for "clothing" in class 25 because the term was too vague and the evidence of its use did not justify such a registration.  Victoria's Secret submitted that Class 25 should be limited to categories of shirts (men and women), polo shirts, socks, blouses, and knitted jumpers.

Victoria’s Secret also sought to rely on the fact that the two brands have been co-existing in the US market for many years without confusion.

The Decision

The judge found that Victoria's Secret had infringed under s.10(2)/Art.9(1)(b) by using the PINK brand on garments and shop fronts.  Such use would give rise to a likelihood of confusion.  The judge did not give much weight to the point made by Victoria's Secret that both parties had co-existed in the US for many years without confusion since he was not satisfied that the trading conditions and relative positions of the parties were sufficiently similar in the UK or EU.

The judge also found that Victoria's Secret had infringed under s.10(3)/Art.9(1)(c).  Detriment was likely to be caused to the repute and distinctive character of the Thomas Pink's marks. The judge was of the view that customers would not view the CTM in the same way as they would associate it with a mass market offering thereby reducing its luxurious reputation.  Customers would be less inclined to buy the products causing a change in their economic behaviour. In addition the public would no longer see the CTM as exclusively designating Thomas Pink but as referring to Victoria's Secret.  There was a real risk that there would be a change in the economic behaviour of customers.  According to the judge "consumers are likely to enter one of Thomas Pink’s shops looking for lingerie and be surprised and disappointed when they find they have made a mistake".

On the invalidity arguments, the judge held that Thomas Pink's UK trade mark was prima facie invalid   under s.3(1)(b) and 3(1)(c) because the mark was predominately the word "pink", which described a characteristic of clothing.  However, the mark was held to be valid as it had acquired a distinctive character through extensive use over many years.  Thomas Pink was entitled to rely on the use of the mark in a different form to which it was registered since the differing form did not alter the distinctive character of the mark.

On the non-use argument, the judge considered the vast majority of the goods should not be revoked because there had been use, albeit that the use was in a slightly different form to that registered. "clothing" was a fair description of the goods in class 25 for which genuine use had been established.    However it is worth noting that there was a limited number of goods within Thomas Pink's specification where there was found to have been no genuine use (these will now be removed).

The judge didn’t find it necessary to consider the passing off case in light of his findings on trade mark infringement.

Comment

One interesting part of the judgment relates to the evidence of confusion adduced by Thomas Pink. The reason for this is that UK Courts tend to be very strict about how such evidence can be adduced in trade mark cases.

In this case, several members of staff of Thomas Pink gave evidence recounting incidents where members of the public appeared to be confused, but none of the consumers themselves gave evidence.

The judge commented at paragraph 160 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.”

The acceptance by the Court of this kind of evidence may give some comfort to brand owners who might find it difficult to convince members of the public to give evidence in Court proceedings.

It is widely anticipated that Victoria's Secret will appeal this decision, so stay tuned for further developments….

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