The recent UK High Court decision in the case of Thomas Pink and Victoria's Secret covers a range of trade mark issues. Unfortunately the most interesting aspect covered, trade mark dilution, is of little more than academic interest to us in South Africa.
The facts were as follows: Thomas Pink, the UK company that makes those wonderful (and my favourite) shirts, has registrations for the trade mark Pink (either stylised or together with other words) in class 25 for clothing and in class 35 for retail services. When Victoria's Secret opened a number of stores in London called Pink – stores at which it sold a range of so-called 'college girl' clothing – Thomas Pink cried foul. The company claimed that its trade mark registrations had been infringed, firstly because there was a likelihood of confusion, and secondly because there would be dilution of its well-known trade mark .Victoria's Secret counterclaimed for cancellation of Thomas Pink's trade mark registrations, claiming both non-distinctiveness (the word 'pink' is obviously descriptive for clothing) and non-use for a period of five years or more.
The counterclaim was dismissed. As for non-distinctiveness, Judge Birrs was satisfied that Thomas Pink had been able to establish acquired distinctiveness of the descriptive word 'pink', in other words distinctiveness derived from considerable use of the trade mark. As for non-use, the judge was satisfied that, even though the trade marks that had been used were not exactly the same as the trade marks that were registered, they were close enough. The judge said this: 'Proprietors do not always and consistently use a mark in precisely the form as registered. This is recognised in s. 46(2)... which permits minor variations to be taken into account in order to avoid revocation of the mark.'
So how about infringement? It's important to note that there were various different types of use that Thomas Pink objected to: use of Pink as the name of stores; use of Pink directly on clothing; and use of Pink on swing-tags which also featured the trade mark Victoria's Secret, as in Victoria's Secret - Pink. The judge held that the use of Pink as the name of stores did infringe the class 35 registration, despite the fact that some of the Pink stores were alongside Victoria's Secret stores and could, in some cases, even be accessed from within Victoria's Secret stores. He also held that use of Pink directly on clothing infringed the class 25 registration. But when it came to the use of Pink on swing-tags in conjunction with Victoria's Secret, there was no infringement because there was no likelihood of confusion.
So, a likelihood of confusion in certain cases but not in others. Nothing too radical there – it's quite likely that a South African court would've come to the same finding. But then the judge moved on to dilution, an area where we've been left behind.
The judge started off by pointing out that dilution consists of four elements: the registered trade mark must enjoy a reputation; consumers must draw a link between the trade marks; the party who's charged with dilution must not have 'due cause'; and the owner of the registered trade mark must suffer detriment.
The judge found that the reputation was definitely there. As for the link, the judge accepted that people seeing the use of Pink by Victoria's Secret would draw a link with Thomas Pink, even in the case of the swing-tags, where they wouldn't be confused. As for due cause, Victoria's Secret was unable to show any due cause for its use of Pink – the fact that it was expanding a US brand into the EU was not due cause, and the fact that the two parties' trade marks had co-existed in the USA for many years was not relevant.
Which left detriment. The judge found that there would be detriment to repute, because Victoria's Secret – which is associated with sexiness and sauciness – has a very different image from that enjoyed by Thomas Pink. He said that there was a risk that Thomas Pink would be 'associated with a mass market offering reducing its luxurious reputation... there is every risk that this will lead consumers not to buy products from the claimant that they would otherwise have done.' This, said the judge, meets the 'change in economic behaviour' on the part of consumers that's required for dilution in terms of previous EU cases like the famous case of Intel.
As I said earlier, this part of the judgment is almost academic for us in South Africa. Yes, our law does recognise dilution, and in fact the wording of our dilution legislation is very similar to the wording of the dilution provisions in the UK and the EU. Yet in South Africa the dilution section has been interpreted in such a way as to require more than a mere change in economic behaviour on the part of consumers, but a likelihood of economic loss. We've been saddled with this ever since brewing giant, SAB, took a satirist to court over t-shirts that commented on the company's perceived historical labour practices by altering the famous Black Label logo to Black Labour. Something the South African Constitutional Court held did not lead to any economic loss, and therefore did not dilute the Black Label trade mark registrations.
I'll leave you with the words of Judge Louis Harms who was, until his recent retirement, the leading IP judge in South Africa: 'The Constitutional Court, in upholding this defence on very broad free expression terms and by requiring proof of actual loss inadvertently eroded dilution as a cause of action ... its jurisprudence is at complete variance with that of the developed world.'
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