Canada: Declarations Of Non-infringement

Last Updated: April 9 2014
Article by John McKeown

The Facts

The Parties

Thomas Pink limited (Thomas Pink) is a part of the Louis Vuitton Moet Hennessy group. Thomas Pink is an international luxury shirt brand. As well as shirts for men and women Thomas Pink sells silk ties, tailoring, knitwear and accessories.

Thomas Pink's branded goods are sold in Canada and it owns a number of registered trades marks the majority of which include the word "PINK" in a block-letter design format or in combination with other words such as THOMAS PINK.

Victoria's Secret Stores Brand Management Inc. and Victoria's Secret (Canada) Corp. (collectively "Victoria's Secret"), carry on the business in Canada of selling women's intimate and other apparel, beauty and personal products and accessories in association with the trade mark VICTORIA'S SECRET.

Victoria's Secret owns a number of Canadian registered trade marks and applications, some of which are for VICTORIA'S SECRET alone; some include the word PINK in addition to other words such as VICTORIA'S SECRET. One of the applications is for the word PINK alone in a block-letter design for use with a broad range of products; including personal care products and clothing – including shirts. The examiner in that application issued a report taking the position that the applied for mark was confusing with Thomas Pink's registered mark consisting of the word PINK.

The Proceedings

In May 10, 2013 Thomas Pink sued Victoria's Secret UK Limited in the United Kingdom, a company related to Victoria's Secret Stores Brand Management, Inc. for alleged infringement of its PINK trade marks. In its defense Victoria's Secret alleged that there had been no instances of confusion between the Thomas Pink's business and the business of Victoria's Secret in either the United States of America or Canada.

Shortly thereafter Victoria's Secret brought an action in Canada in the Federal Court for, among other things,

(1)  a declaration that Victoria's Secret's use of PINK, VICTORIA'S SECRET PINK and related "PINK" trade marks and trade names in association with a specific list of wares and services was not contrary to the Trade-marks Act, with regard to Thomas Pink's registered Canadian trade marks; and

(2)   an injunction restraining Thomas Pink from instituting, prosecuting or threatening any action against Victoria's Secret or any of its affiliates with respect to Victoria's Secret's use of the VICTORIA'S SECRET PINK marks.

Thomas Pink brought a motion for an order dismissing the action on the basis that Victoria's Secret, did not have standing to bring the action, since they were not "interested persons" within the meaning of the Act.

The Decision

The Judge who heard the motion decided that the provisions of the Act should be construed in a manner which promotes access to it and that the threshold for determining whether a person is a "person interested" was low.  Such a person need only demonstrate a reasonable apprehension that a commercial interest that it has, or may have, may be affected.

The Judge then concluded that Victoria's Secret had a "reasonable apprehension" that their Canadian commercial activities may be challenged by Thomas Pink by litigation or otherwise, under the Act.


The approach taken in this case seems to be influenced by the U.S. practice were the parties rush to bring the first proceeding.  However, presumably in many cases this is driven by the parties' desire to attempt to secure a jurisdiction to their liking.

It remains to be seen how effective such a strategy will be in Canada where the vast majority of trade mark litigation is dealt with in the Federal Court. In addition, there are some negative consequences of this approach including the following:

a)     bringing such an action almost certainly guarantees a counterclaim alleging infringement will be filed by the defendant;

b)    the onus of proof will be on the plaintiff to show that confusion between the parties' respective marks is not likely.

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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John McKeown
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