Victoria's Secret no longer in the pink: Thomas Pink wins in trademark fight

The High Court of Justice has handed down its judgment in Thomas Pink Ltd v Victoria’s Secret UK Ltd (2014 EWHC 2631 (Ch), July 31 2014). Birss J ruled that Victoria's Secret UK Ltd's use of its sub-brand PINK had infringed Thomas Pink Ltd's trademarks for PINK, as the average consumer was likely to be confused by the similarity of the signs.

The business impact of the decision is as follows:

• 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.

• The High Court's decision is an interesting application of the principles of non-use and acquired distinctiveness in relation to trademarks, with Birss J upholding the validity of Thomas Pink's UK trademark, despite the fact that it had not been used in precisely the form registered.

The claimant, Thomas Pink, began trading in London in 1984, primarily selling men's shirts, but its business has since diversified to include other clothing items. All of its goods are sold under, and by reference to, the names Thomas Pink and PINK. Thomas Pink is the proprietor of two trademark registrations:

• Community trademark (CTM) No 3,949,906, filed on July 14 2004 in Classes 3, 14, 18, 25, 26 and 35 of the Nice Classification:

• UK trademark No 2,565,078, filed on November 22 2010 in Classes 14, 18, 25 and 35:

  

The defendant, Victoria's Secret UK Ltd, is part of a group which sells the famous Victoria's Secret line of lingerie, which is known worldwide. In 2004 the Victoria's Secret group launched a sub-brand in the United States called PINK, which now has standalone PINK branded stores. In 2012 Victoria's Secret began opening retail outlets in the United Kingdom. In its PINK UK stores (although there was some debate in the case as to whether Victoria's Secret had standalone PINK UK stores), Victoria's Secret sells a wide variety of casual clothing, many of which present the word ‘pink’ alone in a prominent way - for example:

However, all of Victoria's Secret's garments carry the words ‘Victoria's Secret’ somewhere, most often on the neck label, for example:

Thomas Pink alleged that Victoria's Secret's acts amounted to passing off and infringement of its registered trademarks under Section 10(2)/Article 9(1)(b) and Section 10(3)/Article 9(1)(c) of the Trademarks Act 1994/Community Trademark Regulation (207/2009), arguing that the average consumer is likely to be confused by Victoria Secret's use of PINK as a primary sign on its garments. Thomas Pink adduced evidence of consumer confusion, including the example of consumers attempting to return Victoria's Secret goods to its UK stores. In support of its Section 10(3)/Article 9(1)(c) claim, Thomas Pink argued that there was a real risk of tarnishment to its traditional brand values by association with a lingerie label, which has a very different brand message.

In its defence, Victoria's Secret argued that Thomas Pink's marks were invalid and/or that elements of the marks 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.

The defendant also argued that Thomas Pink's UK trademark was invalid under Sections 3(1)(b) and 3(1)(c) of the Trademarks Act 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.

Birss J ruled in favour of Thomas Pink, finding that Victoria's Secret had infringed Thomas Pink's trademarks under Section 10(2)/Article 9 (1)(b) and Section 10(3)/Article 9(1)(c) of the Trademarks Act/Community Trademark Regulation. He did not find it necessary to consider the passing-off case in light of his findings on the trademark infringement case.

Birss J considered four different types of use of the PINK brand by Victoria’s Secret and found that use of the mark on garments and on store fronts in the UK infringed Thomas Pink’s trademarks, whereas other uses which combined PINK with the well-known VICTORIA’S SECRET mark (in-store signage and on Victoria's Secret's UK Facebook page) did not infringe, as those uses were unlikely to result in confusion. He found that the use of PINK by Victoria's Secret would cause detriment to the repute of Thomas Pink's marks, although he did not use the term ‘tarnishment’, since it was "unduly pejorative".

On the invalidity arguments, Birss J held that Thomas Pink's UK trademark was prima facie invalid under Sections 3(1)(b) and 3(1)(c) of the Trademarks Act because the mark was predominately the word ‘pink’, which described a characteristic of clothing. However, the mark was valid under the proviso to Section 3(1) of the Trademarks Act, as it had acquired distinctiveness 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 as "proprietors do not always and consistently use a mark in precisely the form as registered".

On the non-use argument, Birss J considered that, although there were a limited number of goods within Thomas Pink's specification where there had been no genuine use (which should be removed), 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.

Thomas Pink had registered its PINK marks only in logo form, not as word marks. The decision does not give Thomas Pink the right to monopolise the word pink in relation to clothing, but it can enforce its marks against other Pink logos which are confusingly similar.  The decision of Birss J is perhaps not altogether surprising when one compares the representations of both parties' logos. Thomas Pink is now seeking an EU-wide injunction to prevent any further infringement by Victoria's Secret. However, it is anticipated that Victoria's Secret will be appealing the decision, given the impact that it will have on its European expansion plans. 

Joel Smith, Sarah Burke and Sana Sheikh, Herbert Smith Freehills LLP, London