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.
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;
(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
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 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
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
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).