High Court finds Victoria's Secret "PINK" mark to be infringing
Victoria's Secret's use of "PINK" on garments and store fronts is held to infringe luxury shirtmaker's registered trade marks.
The High Court finds confusion and reputation based trade mark infringement.
What’s it about?
Luxury shirtmaker Thomas Pink Limited is the registered owner of a Community (CTM) and UK trade mark for PINK for various goods in class 25. In 2012 Victoria's Secret opened two London stores branded PINK selling items which were prominently branded PINK. Victoria's Secret's PINK brand was predominantly aimed at young women. Thomas Pink commenced proceedings for confusion and reputation based trade mark infringement and passing off. In its defence, Victoria's Secret sought to invalidate Thomas Pink's registrations claiming that the PINK mark was descriptive and had not acquired distinctiveness. It also tried to revoke elements of the CTM for non-use.
The High Court found in favour of Thomas Pink. The CTM was upheld as having been put to genuine use in relation to the vast majority of goods for which it was registered including "clothing". Although inherently non-distinctive, the UK trade mark was held to have acquired a distinctive character through use.
The High Court found that Victoria's Secret's use of the mark PINK on clothing and as a store name gave rise to a likelihood of confusion on the part of the average consumer. Thomas Pink's CTM was found to have a considerable reputation in relation to luxury shirts and other clothing. The average consumer would perceive a link between the mark and Victoria's Secret's PINK sign, causing detriment to the repute and distinctive character of the CTM.
Why does it matter?
The judgment confirms that even where fashion brands target different sectors of the market confusion between trade marks can arise.
Interestingly, the Court held that the UK trade mark could acquire distinctiveness where it was used in a form that differed from the mark as registered. Such use would also not prevent the mark from acquiring the relevant reputation for reputation based infringement.
This is not likely to be the end of the matter. The success in the CTM infringement claim means an injunction of the PINK brand across the EU. An appeal is outstanding.
Thomas Pink Limited v Victoria's Secret UK Limited  EWHC 2631 (Ch)
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