Thomas Pink Limited has come out victorious in the UK in its legal battle against the US lingerie powerhouse Victoria’s Secret over the use of the term “PINK”.

Thomas Pink is a British company which started trading in 1984 with its core business being the sale of luxury shirts for men, although since then has expanded its range of products to include other articles of clothing and accessories.

Since its incorporation, Thomas Pink has sold its goods under the names THOMAS PINK and PINK, and has protected its marks by obtaining trade mark registrations for the following:

  1. Community Trade Mark

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  1. UK Series Trade Mark

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Victoria Secret adopted the brand PINK in the US in 2004 to diversify its current business into more casual clothing and underwear aimed at the “college girl”. In 2012, it expanded its PINK brand to the UK by opening freestanding PINK stores in London, selling the PINK branded merchandise and using the term PINK in the following manner:

  1. Use of the words VICTORIA’S SECRET PINK in that order with the same emphasis:

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  1. Use of the word PINK above the trade mark ‘VICTORIA’S SECRET’:

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  1. Use of the word PINK as an element of a slogan (in various different configurations):

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  1. Use of the word PINK alone (in various scripts):

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This use of the term “PINK” led to Thomas Pink bringing trade mark infringement and passing-off proceedings against Victoria’s Secret in the UK High Court (Chancery Division). 

The Court found that Victoria’s Secret’s use of the trade mark “PINK” infringed Thomas Pink’s registered trade marks. Mr Justice Birss did not consider it necessary to consider passing-off.

Victoria’s Secret attempted to defend its use of the term “PINK” by seeking to revoke Thomas Pink’s Community Trade Mark (CTM) on the basis that it had not been genuinely used as registered. The Court, however, found that Thomas Pink did show genuine use of different types of garments to sustain the CTM in respect of clothing. Victoria’s Secret's claim that the term  “clothing” was too vague for classification purposes was also dismissed, since the term is sufficiently clear and precise. The CTM was, however, restricted since there had not been genuine use of all of the items covered by the registration.

Victoria Secret also sought to invalidate Thomas Pink’s UK trade mark registration by arguing that the term “PINK” designated a characteristic of the goods and services and the stylisation of the mark did not add any “spark of distinctiveness”. Whilst the Court accepted this, it found that the UK series mark had acquired the requisite distinctive character through use, even though the evidence related to a slightly different mark. It was found that the use in a form differing in elements could be relied upon when assessing acquired distinctiveness and the marks do not have to be absolutely identical. There had been significant evidence of use of the CTM and the UK series mark could benefit from this use to show acquired distinctiveness.

Consequently, the Court found that the signs used by Victoria’s Secret in boxes 1, 3 and 4 above were confusingly similar to Thomas Pink’s registered trade marks and, therefore, infringed their registered rights. However, use in respect of the swing tags or labels in box 2 in the retail context or the promotion of the brand on Facebook, would not lead to public confusion.

Although not lending any significant positive support for Thomas Pink’s case, the Court found that the instances of actual confusion reported by Thomas Pink’s members of staff were sufficient to prevent Victoria Secret from contending that there was no evidence of actual confusion.

In addition, Victoria’s Secret’s arguments of the lack of evidence of confusion in the US, despite trading side-by-side, did not carry much weight, since the trading conditions and relative positions of the parties in the US were not sufficiently similar to the UK and EU.

Furthermore, the Court found that the infringement case based upon Thomas Pink’s reputation was proven, since Victoria’s Secret did not have any due cause to use the term “PINK” in this manner. Moreover, Victoria’s Secret's use of the term “PINK” would be detrimental to the distinctive character and repute of Thomas Pink’s trade marks.

Finally, Victoria Secret unsuccessfully pleaded acquiescence, since it was found that it is irrelevant whether Thomas Pink knew about the Victoria’s Secret PINK business in the US. Although Victoria’s Secret has owned two trade mark registrations for VICTORIA SECRET PINK, one being a device mark, since 2008 and 2007 respectively, there was no satisfactory use of these marks in the EU. Also, their use of the PINK branded goods in the EU has only been since 2012, which is too recent for acquiescence to apply.

Although this may perhaps not be the end of the PINK battle, the decision should bring some comfort to owners of relatively non-distinctive marks, since they could potentially rely on evidence of acquired distinctiveness, even though the evidence of use may relate to a slightly different mark. It is also good to note that the Court took a commercial view and assessed likelihood of confusion in the context of the UK market place only. Accordingly, that whilst the parties may perhaps co-exist harmoniously in the US without public confusion arising, the decision confirms that trade mark rights apply territorially and that likelihood of confusion should be interpreted by focusing on the parties’ respective positions and the specific trading conditions in the relevant territory only.