Thomas Pink triumphs over Victoria’s Secret in PINK dispute

In Thomas Pink Ltd v Victoria’s Secret UK Ltd (2014 EWHC 2631 (Ch)), the UK High Court has ruled that Victoria’s Secret UK Ltd’s use of the term ‘pink’ infringed Thomas Pink Ltd’s PINK trademarks.

Thomas Pink started trading in London in 1984, primarily selling men’s shirts. Thomas Pink’s goods are sold under the names Thomas Pink and PINK, and the company is the proprietor of trademark registrations for figurative PINK marks. In 2004 Victoria’s Secret adopted the brand PINK in the United States and in 2012 it opened freestanding PINK stores in London, selling PINK-branded merchandise. Some of the goods presented the word ‘pink’ alone in a prominent manner, but all of Victoria’s Secret’s garments bore the words ‘Victoria’s Secret’ somewhere.

Thomas Pink brought trademark infringement and passing-off proceedings against Victoria’s Secret in the High Court.

The court considered different types of use of the PINK brand and found that use of the mark on garments and on store fronts in the United Kingdom infringed Thomas Pink’s marks. However, other uses which combined PINK with the VICTORIA’S SECRET mark were found not to infringe. It also found that the use of the PINK brand by Victoria’s Secret would cause detriment to the repute and distinctive character of Thomas Pink’s marks. The court did not find it necessary to consider the passing-off case in view of its findings in the infringement case.

Victoria Secret also argued that Thomas Pink’s UK mark was invalid, as the word ‘pink’ was descriptive and the stylised elements added no “spark of distinctiveness”. Further, it alleged that the mark could not have acquired distinctiveness as Thomas Pink had never used the mark in the form in which it was registered. The court found that the UK mark had acquired the requisite distinctive character through extensive use, and that use in a slightly differing form could be relied upon when assessing acquired distinctiveness.

Counsel comment:

The business impact of the decision is twofold. First, fashion brand owners are likely to welcome the decision, as it allows them to protect their trademarks against other fashion brands even if they operate in very different market segments. Second, it is an interesting application of the principles of non-use and acquired distinctiveness in relation to trademarks, with the court upholding the validity of Thomas Pink’s UK trademark, despite the fact that it had not been used in precisely the form registered.

Joel Smith, partner, Sarah Burke, senior associate, and Sana Sheikh, trainee solicitor at Herbert Smith

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