Thomas Pink has won its infringement case against Victoria’s Secret over the name of its Pink sub-brand as a judge ruled it could confuse customers.
Thomas Pink launched legal proceedings after the US lingerie giant opened in the UK in 2012 with stores branded Victoria’ Secret and Pink – a brand aimed at the “college girl”. Thomas Pink argued it had entered the territorial zone of its exclusivity.
Mr Justice Birss said that the use of the word Pink emblazoned on Victoria’s Secret items of clothing and fascia gave rise to a likelihood of confusion and caused a detriment to the repute of Thomas Pink’s trademark.
He said: “The defendant’s overall business is a legitimate one. Nevertheless, it is one which had been associated with some controversy, no doubt because ‘sexy sells’. Examples were in the evidence of goods which had to be withdrawn by the defendant after complaints.
“The link between the CTM (Community trade mark) and the defendant’s Pink brand will cause consumers to associate the two. This is bound to cause a change in the economic behaviour of the claimant’s customers.
“The claimant’s trade mark will 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 when they otherwise would have done.”
Thomas Pink had argued that some of its customers had already attempted to return its goods to Victoria’s Secret stores and had asked to buy Victoria’s Secret or Pink goods in Thomas Pink stores or vice versa.
Thomas Pink president and chief executive Jonathan Heilbron said: “We are delighted with the outcome of this case, and will continue to protect the considerable investment that has been made into building Thomas Pink into a leading luxury clothing brand.”
Law firm Taylor Wessing senior associate Tom Carl said: “This decision gives Thomas Pink relative control over the use of the word pink as a brand in the fashion sector, and means that other traders will need to think carefully about how they use similar branding.
“This decision does not mean it’s open season for any fashion brand to trade mark and attempt to monopolise colour names. Thomas Pink’s ‘Pink’ trade mark is only registered in a specific logo form – not the word itself – and the court held that it was only valid due to having ‘acquired distinctiveness’ among consumers, having been used as a brand since the company opened its doors in 1984.”
However Withers & Rogers partner Tania Clark said Victoria’s Secret might seek to appeal the judgement. She said: “As a legitimate retailer with a strong consumer following in the US and around the world, Victoria’s Secret will probably be aggrieved and, if for only this reason, they may choose to appeal the decision.”