October 21, 2014

The true “PINK”: Thomas Pink sues Victoria’s Secret


This summer, the High Court found that the well-known lingerie brand Victoria’s Secret had infringed the registered trade marks owned by high street retailer, Thomas Pink.

Thomas Pink, formerly best known for selling shirts to professionals, has over the years diversified into other items of clothing and accessories under the name “PINK”.

In 2012, Victoria’s Secret sub-brand “PINK” opened a retail store, selling casual clothing, fragrances and toiletries with the word “PINK” prominently displayed. While the words “Victoria’s Secret” also appeared, they were not always noticeable.

Thomas Pink issued proceedings alleging that Victoria’s Secret use of “PINK” amounted to passing off and trade mark infringement as the use of “PINK” was likely to confuse the public. It also alleged that Victoria’s Secret’s “PINK” sign was detrimental to the distinctive character and reputation of Thomas Pink’s brand, presumably because of its association with lingerie.

Victoria’s Secret argued that:
1. Thomas Pink did not use the trade mark for many of the goods and services covered by the mark, e.g. “clothing”. Therefore the extent of the protection given by the registered status of the trade marks should be limited;
2. the word “PINK” was invalid because it was distinctive to the goods sold, i.e. those that were pink in colour.

The High Court dismissed both arguments. The category “clothing” was found to be sufficiently clear to cover a diverse range of clothing now sold by Thomas Pink. The mark had also acquired distinctiveness as it had used “PINK” against a pink background for years. It was not necessary for the trade mark to be identical to that filed at registration, minor variations are permitted. What’s more, even though Victoria’s Secret used the sign “PINK” in different ways to Thomas Pink, it was very similar to Thomas Pink’s trade marks and likely to confuse the public. Victoria Secret’s sales were aimed at the mass market and therefore the connection reduced the luxurious appeal promoted by Thomas Pink.

What should your business take from this?
With the courts now exploring claims for reputational damage alongside trade mark infringement, this case serves as a warning for businesses to search for potentially similar trade marks, not only at the outset of a new venture but also when diversifying into other sectors. This can avoid costly and time consuming litigation, leaving you to focus on your business objectives.


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