UK: Thomas Pink Ltd –v- Victoria's Secret UK Ltd

Last Updated: 3 November 2014
Article by Dan Parkes

British retailer Thomas Pink has emerged victorious in its most recent trade mark dispute with American lingerie giant Victoria's Secret in the High Court case of Thomas Pink Ltd v Victoria's Secret UK Ltd [2014] EWHC 2631 (Ch).

Thomas Pink is a well-known retailer, principally of luxury work shirts but also of other clothing, that sells goods under the names Thomas Pink and PINK. It is the proprietor of Community and UK trade mark registrations both of which prominently feature the word 'PINK'.

In 2004 the Victoria's Secret group launched a sub-brand in the USA called PINK. The brand owners sell a wide range of clothing targeted at 'college girls' aged between 18 and 25. Victoria's Secret opened its first European store on Bond Street in London in 2012. It was this European expansion that led to Thomas Pink's claim for trade mark infringement. Victoria's Secret counterclaimed that the marks were invalid and should be revoked for non-use.

Revocation

Under Article 51(1)(a) of the CTM Regulation 207/2009/EC (CTM Regulation) a CTM will be revoked if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

Victoria's Secret successfully contended that a number of categories of goods should be revoked from the specification of the claimant's CTM for non-use: Class 14 was reduced from jewellery and cufflinks to cufflinks; Class 26 was amended to remove buttons; and Class 3 (which contained cosmetics etc.) was revoked entirely. In respect of Class 25 ("clothing, footwear, headgear") Victoria's Secret argued that the registration should be limited to those categories for which genuine use was found and not simply clothing in general, and that the term clothing was inherently unclear. Rejecting this argument on both counts, the court found that not only was the term 'clothing' clear but that the range and variety of items for which Thomas Pink had used the mark justified the description 'clothing'. However, footwear was reduced to wellington boots and headgear was removed entirely.

Distinctiveness of the UK trade mark

Victoria's Secret contended that the UK trade mark registration should be declared invalid since it was not distinctive, contrary to s.3(1) of the Trade Marks Act 1994 (TMA). Section 3(1) of the TMA provides that a trade mark should not be registered if either :

  • it is devoid of distinctive character (s.3(1)(b)); or
  • it consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services (s.3(1)(c)).

Thomas Pink argued that since the trade mark was a stylised form of the word PINK with a particular font, fill and visual element it could not be said to fall foul of either s.3(1)(b) or (c). Victoria's Secret rejected this, instead relying on the case of Starbucks v British Sky Broadcasting [2012] EWHC 301 (Ch) in which a stylised version of the word 'now' was precluded from registration.

Birss J found that the mark did not satisfy either section 3(1)(b) or section 3(1)(c). The mark was predominately the word "pink", which describes a characteristic of clothing, and the font and style of the mark were insufficiently significant to detract from this.

However, the proviso to s.3(1) of the TMA provides that a trade mark will not be refused registration under sections 3(1)(b) or (c) if it has acquired a distinctive character as a result of the use made of it.

Basing their argument on the precise wording of the TMA Victoria's Secret contended that a trade mark could only acquire distinctiveness under the proviso if the mark had been used in a form identical to the mark registered. Whilst agreeing that Victoria's Secret made a 'strong point', Birss J felt there was no reason why European trade mark law should be as restrictive as the defendant's submission suggested, and found that Thomas Pink had made sufficient use of the trade mark for it to acquire distinctiveness.

Infringement

Section 10(2)

Thomas Pink claimed that Victoria's Secret had infringed its mark under s.10(2) of the TMA. Under that section a person infringes a mark if he uses in the course of trade a sign where because:

  • the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
  • the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark registrations.

In assessing the identity of the average consumer, through which the likelihood of confusion is judged, the court held that it should represent a broad spectrum of consumers from all levels of the market. This was contrary to Victoria's Secret submission that average consumers should be divided into consumers of lower-priced and high-end clothing. The court also found that on comparison the marks used by Victoria's Secret were similar to Thomas Pink's trade marks. Accordingly, it was held that a number of Victoria's Secret PINK products and marketing materials infringed Thomas Pink's CTM and UK trade mark.

Section 10(3)

Thomas Pink also alleged infringement under s.10(3) of the TMA. Under this section a person infringes a registered trade mark if he uses an identical or similar sign in the course of trade in relation to goods or services even if they are dissimilar to those for which the trade mark is registered, providing that the trade mark has a reputation in the UK and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark.

Birss J accepted that the mark had the necessary reputation and rejected Victoria's Secret's claim that their expansion into the EU was simply an extension of their business activities in the USA, thus giving them due cause to use PINK branding. He also accepted that the defendant's use of PINK was potentially detrimental to the claimant's mark due to Victoria's Secret's "sexy, mass-market appeal". The court therefore found in Thomas Pink's favour and ruled that the case for infringement under s10(3) had also been proved.

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.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
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).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.