A couple of weeks ago we wrote about recent European administrative and court cases that ended in bad news for U.S. trademark owners (Perfect Your Foreign Trademark Rights Early or Risk Losing Them Forever). Proving that bad things can happen in threes, UK Judge Colin Birss ruled last week that Victoria’s Secret’s “Pink” brand of lingerie infringes the trademark of Thomas Pink Ltd., a high-end clothier whose flagship store is located in London.
The parties had coexisted peacefully since VS introduced its “Pink” line in 2004, but Thomas Pink used VS’s opening of its first retail outlet in the UK in 2012 as justification to file suit.
Judge Birss held that VS’s use of the word “Pink” as its trademark would cause consumers to associate the two companies’ products to the detriment of the reputation of Thomas Pink. Rather than focusing on any likelihood of confusion, the judge’s reasoning was more along the lines that a U.S. court might employ in deciding a dilution case. Specifically, the court held that consumers might associate the high-end shirt maker and clothier with mass-market underwear, all to the detriment of the reputation and cache of the THOMAS PINK brand. Similar to the court in the Glee case, this court also employed a line of reasoning similar to the U.S. doctrine of reverse confusion in finding that VS is a huge business that is likely to saturate the market with its advertising, leading to circumstances where customers might enter a THOMAS PINK store looking to purchase lingerie and to be disappointed upon discovering their mistake.
Unlike the trademark owners in the GLEE and PINTEREST cases, it is unlikely that VS could have anticipated such a dispute, especially in light of nearly a decade of concurrent use. Nevertheless, the case once again highlights the importance of trademark due diligence prior to introducing a brand into a new geographic market.