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The Secret is out and PINK is in
The High Court has ruled that the use of PINK by the lingerie brand, Victoria’s Secret, infringes the trade marks of Thomas Pink.
In the battle of the PINKS, Thomas Pink managed to convince the Court that there was a likelihood of confusion between the marks and that
he use of PINK by Victoria's Secret damaged its reputation.
Although the evidence of actual confusion was not significant, it was held that there was a likelihood of confusion as a result of Victoria Secret’s use of PINK on clothing and on its shop fascia. It was irrelevant that Victoria’s Secret’s PINK stores were often beside a Victoria Secret’s store and although the PINK mark was often accompanied by the words Victoria’s Secret, these additional words were often in small text and the PINK element played a distinctive role.
In contrast, there was no likelihood of confusion in relation to swing tags and labels containing PINK as the consumer would already be in a Victoria’s Secret store and surrounded by Victoria’s Secret merchandise and branding.
Thomas Pink argued that the “sexy, mass market appeal” of the Victoria’s Secret brand would reduce the luxurious reputation of the Thomas Pink brand and lead consumers not to buy its products when they otherwise would have. The Court agreed. Further, the Court decided that the use of PINK by Victoria’s Secret would reduce Thomas Pink’s ability to use its marks to distinguish its goods. As such, Victoria’s Secret’s activities would be detrimental to the reputation and distinctive character of Thomas Pink’s marks and therefore constituted trade mark infringement.
Interestingly, following the strategy adopted by Asos in Assos v Asos, L brands, the owner of Victoria’s Secret, understandably counter attacked Thomas Pink’s trade marks. For example, it suggested that “clothing” was too broad a description of the goods on which Thomas Pink used its marks and therefore the marks should be revoked for non-use. However, Thomas Pink was able to demonstrate sufficient genuine use to justify protection for “clothing” and this particular counter attack failed.
This case acts as a reminder that using a mark which causes a link to be established between brands in the mind of the consumer, resulting in there being a serious risk that the consumer changes their economic behaviour, can result in a finding of trade mark infringement.
Clearly Victoria has got her knickers in a twist whilst Thomas is in the pink!