Tickled Pink - British shirtmaker wins trade mark fight against Victoria's Secret

Matthew Dick, a partner with D Young & Co LLP specialising in brands, discusses Thomas Pink’s High Court victory over Victoria’s Secret (Thomas Pink Ltd v Victoria’s Secret Ltd [2014] EWHC 2631 (Ch).

What is the background to this dispute?

Thomas Pink, a well-known UK based retailer, but with activity in Europe, owns various trade mark rights which include the word Pink in various forms. The marks relied upon in this particular case were not registrations for the word Pink in and of itself, but in a stylised form. Both marks incorporated the word pink, and Thomas Pink also claimed unregistered rights relating to the mark Pink under the law of passing off. They manufacture and sell shirts, but also a wider range of clothing. They have used the PINK mark in various forms in relation to jackets, underwear, hooded, tops, accessories etc. Thomas Pink has traded in the UK for 30 years or more.

Victoria’s Secret is a very well-known lingerie brand. Victoria’s Secret is their main trade mark, and they started using the word PINK in various forms, in a varsity-type font, as a sub-brand in around 2004 in the US. For Thomas Pink, the mark PINK is arguably their main house brand. Victoria’s Secret is known for its lingerie products, and developed the Pink brand to appeal to ‘college girls’ between the ages of 18–25. They extended their lingerie range to include clothing such as t-shirts, sweatshirts, nightwear and swimwear.

There had been a previous dispute in the US. Victoria’s Secret started using the PINK sub-brand in 2004, some years after Thomas Pink began trading. There was apparently a settlement in the US and the brands have co-existed relatively peacefully there. There was always a Victoria’s Secret Pink Facebook page viewable in the UK, but not obviously targeting UK consumers. Nevertheless, there was always the risk that Victoria’s Secret would want to expand the Pink sub-brand more widely.

Victoria’s Secret launched the sub-brand Pink in the UK in 2012. That led to the current case, in which Thomas Pink claimed for infringement of two trade mark registrations and passing off. The basis of the infringement claim was that Victoria’s Secret’s uses of Pink were confusingly similar to Thomas Pink’s marks—that those marks had a reputation and that subsequently Victoria’s Secret’s use of the PINK brand was detrimental to the distinctive character and repute of those marks.

What did the court say about the validity and scope of the claimant’s trademarks?

Non-use

Generally speaking, when a mark has been registered for five years or more, someone can attack it if it’s not being used in relation to the goods/services for which it’s registered. One of Thomas Pink’s trade marks was more than five years old, and Victoria’s Secret counter-claimed that Thomas Pink’s use of that mark only extended to some of the goods/services covered.

The judge considered whether the mark had been put to genuine use. Thomas Pink was able to show that it had used the mark in a wider context than only shirts, but the defendant was successful in getting Thomas Pink’s registration trimmed back in some respects. For example, no use could be shown in relation to cosmetics and perfume products, and a fairer specification of their claim to the broad term ‘footwear’, was held to be merely ‘wellington boots’. Overall, however, the judge found that the term ‘clothing’ wasn’t too broad, particularly given the wide range of clothing items in relation to which Thomas Pink could show use of its marks.

Lack of distinctiveness

The next attack by Victoria’s Secret was on the distinctiveness of one of the Thomas Pink marks. The main issue here essentially was: was the mark Pink, even in its slightly stylized form, potentially descriptive of certain qualities of the products covered (ie clothing and related items)? If not descriptive, was it otherwise non-distinctive? A trade mark lacking distinctiveness in and by itself can acquire distinctiveness through use.

In terms of the assessment of genuine use applied in the context of revocation claims (discussed above), the test is whether the mark has been used in the form in which it was registered. The law provides some wriggle-room in this respect, in that a proprietor can use the mark with slight differences that do not alter its distinctive character (ie differences that will not necessarily be perceived by the average consumer). Victoria’s Secret argued that that wriggle-room shouldn’t apply when assessing use for the purposes of claiming acquired distinctiveness. Thomas Pink thought that it should.

The judge agreed with Thomas Pink, noting that it is perfectly common for brand owners to tweak their marks in practice. He saw no reason why EU law should be as restrictive as Victoria’s Secret claimed. However, he held that, because of the arguably descriptive qualities of the word PINK, the very slightly stylised forms of the mark registered by Thomas Pink couldn’t possess inherent distinctiveness. The mark had to have acquired distinctiveness for it to stay on the register. Ultimately Thomas Pink had made sufficient use for it to acquire distinctiveness. This attack on validity also failed.

How did the court assess the ‘average consumer’ in light of the fact that different types of consumers might shop in the respective retail outlets?

The court gave a list of several features relevant to the ‘average consumer’ of clothing in this case. Generally, the average consumer is deemed to exercise a moderate level of attention to trade marks, but the court held they would not scrutinise the fine print of clothing swing tags and internal labels. Consumers of clothing vary enormously in their tastes and means, and cover a broad spectrum including tourists, locals and people buying for themselves or as gifts. Victoria’s Secret tried to argue that the average consumer category should be divided into consumers of low end clothing (who might buy Victoria’s Secret products) and high end clothing (who might buy Thomas Pink’s). The judge disagreed and held that the average consumer represents consumers at all levels of the market.

One other important point about the average consumer was that when shopping in retail stores, the court noted that he/she is likely to be drawn inside based on material visible from the exterior of the store including signage and promotions, but especially the name of the store. The court was of the opinion that when consumers sees a shop front on a street, they assume it represents a single store, and do not generally assume that two adjacent shop fronts are necessarily connected.

How important was context to the defendant’s trade mark use in this case?

Increasingly in trade mark cases the context of the defendant’s use is relevant. One of the main pillars of Victoria’s Secret’s defence was the fact that their use of PINK was as a sub-brand, always in conjunction with the well-known Victoria’s Secret trade mark. The court considered its uses in all contexts. However, in many cases, Victoria’s Secret had put the word PINK alone on the fronts of garments, which consumers would necessarily interpret as a brand in its own right. Even in these cases, where Pink was the only visible word externally, Victoria’s Secret maintained that all of its clothes had a Victoria’s Secret swing tag or label, and that they were stored in shops with numerous prominent references to Victoria’s Secret. They argued that that was relevant context.

Thomas Pink argued that the average consumer encountering someone wearing a Victoria’s Secret garment with PINK on the front would not see any swing tag or be exposed to the retail context in which the garment had been sold. The judge held that, in considering the effect of the use of the sign, such a post-sale context was a realistic and fair context in which to do so. Clothing is intended to be worn, and people will see the PINK mark and may assume it relates to the Thomas Pink trade mark. The judge held that similar arguments applied to use of PINK by Victoria’s Secret in slogans like Love Pink, or as part of more stylised logos. They would appear prominently on garments seen after sale, and Victoria’s Secret couldn’t rely on swing tags, labels or shop layouts as relevant contexts.

In addition to the post-sale context, the judge considered other potentially distinct contexts such as the context in which swing tags, labels, the signage on the defendant’s PINK shops, and the Facebook page should be considered by themselves.

How did the claimant go about demonstrating confusion or the likelihood of confusion?

Thomas Pink called 13 members of staff who gave evidence that customers had been confused. One individual tried to return an item brought from Thomas Pink to Victoria’s Secret. Some thought that Thomas Pink was a branch of, or connected with, Victoria’s Secret. Even so, it wasn’t clear whether relevant confusion took place—given the number of locations of Thomas Pink shops, and the number of customers who entered them, Victoria’s Secret argued that this level of confusion was negligible.

The judge found that the claimant’s evidence of confusion was not enough to lend significant positive support to their case, but there was sufficient evidence to prevent the defendant from credibly contending that there was no evidence of actual confusion.

Comparing the marks, they were quite similar in whatever guise the PINK mark was used by Victoria’s Secret. The slogans incorporating the word Pink reduced the similarity somewhat, but that wasn’t held to be substantial. Consumers are accustomed to seeing brands used in slogans. It was also noted that Thomas Pink itself uses the word PINK in slogans such as ‘any colour as long as its…PINK’.

Throughout the case, Victoria’s Secret had tried to maintain that its use of all its marks was in the form ‘Victoria’s Secret Pink’, with no emphasis on the word Pink. But, in many cases, the word Pink was highlighted or used alone, showing that there was intended focus on that element. Use of the mark PINK alone on garments and in slogans/logos were both held to be confusingly similar, as was the use of PINK in Victoria’s Secret’s free-standing store fronts.

On the use of PINK in swing tags and labels, where it was always used in conjunction with the Victoria’s Secret house brand, the judge held that although such composite use reduced the likelihood of confusion, it was not sufficient to eliminate it altogether. This is because the word PINK still played an independent distinctive role. The retail context inside the shops was held to be decisive here. The judge noted that ‘When the average consumer encounters the PINK swing tags and labels in that store they cannot fail to have understood that they are in a Victoria’s Secret store’. Even in a free-standing PINK store, the judge found that there was sufficient emphasis on the Victoria’s Secret house mark to counteract what might otherwise have been a likelihood of confusion.

Use of the word PINK on a brass plate outside the Lancashire Court Victoria’s Secret store was held to have an independent distinctive role and to infringe Thomas Pink’s trade marks, but use of the mark on Victoria’s Secret’s Facebook page in the ‘lock-up’ form ‘Victoria’s Secret Pink’, even if it was targeted to the UK or EU, was held not to give rise to a likelihood of confusion.

What did the court find in relation to detriment to reputation?

In this context, the first question the court had to ask was: does the mark have a reputation? The mark had a major reputation for some goods (luxury shirts), extending more widely (to a lesser degree) to casual shirts, tops, knitwear, ties etc.

If the mark has a reputation, a claimant then has to prove that consumers will make a link with it from the defendant’s use; that use also has to be without due cause. Just bringing the mark to mind is enough to show a link, and the court held that this was eminently likely, even on the swing tags/labels when viewed within the defendant’s own shops.

As regards ‘due cause’, this can be established if the use complained of began before the claimant’s mark was filed, and that the use was in good faith. The judge acknowledged Victoria’s Secret’s use of the PINK mark in the US, that there was coexistence there, and that Thomas Pink had agreed not to sue Victoria’s Secret in the US—but that did not confer a right to coexist in the UK. A key distinction here was that the use relied on by the defendant didn’t predate the filing of the earliest of Thomas Pink’s marks.

Victoria’s Secret didn’t apparently conduct a trade mark search before entering the UK market, presumably because it believed it was acting in good faith under its own mark. However, the judge held that the company was wrong about several important aspects of Thomas Pink’s trade mark rights in the UK and EU, and how substantial they were (in particular the scope of their protection).

As to whether Victoria’s Secret’s use of the PINK mark was detrimental to Thomas Pink, the court stopped short of saying that it would cause tarnishment, since the defendant’s business was a legitimate (albeit one that was occasionally controversial). However, the link between Thomas Pink’s marks and Victoria’s Secret’s use would cause consumers to associate the two: they will associate the sexy, mass market appeal of the Victoria’s Secret brand with the luxurious reputation of Thomas Pink’s trade marks, and the latter’s reputation would be reduced as a result. It might result in consumers not buying products from the claimant when they may otherwise have done so.

The link would also damage the distinctiveness of Thomas Pink’s mark, and reduce its ability to act as a designator of trade origin unique to the claimant, largely because the defendant was not using the PINK mark descriptively. Consumers may think that Thomas Pink’s own mark belongs to Victoria’s Secret, which may lead to a change in their economic behaviour.

What can brand owners learn from this judgment?

Victoria’s Secret is a sophisticated brand owner and knows that trade marks are territorial. It will have been aware that the position in the US wasn’t going to assist it greatly in the UK dispute, which is unquestionably Thomas Pink’s core market. It was always going to be a more hotly contested dispute here. As the judge said, they shouldn’t have underestimated the rights that Thomas Pink have on their home turf.

Some businesses think that using a mark as a sub-brand gives a certain degree of protection against an infringement claim. That may be the case, particularly since the court has confirmed that the context of such use is all-important—however, the degree of distinctive character possessed by a claimant’s mark will also be relevant. Victoria’s Secret were probably placing greater reliance than they should on the fact that the mark PINK is not the most distinctive. While the court agreed to an extent, the substantial use of the mark made by the claimant was decisive. The take-home message here is straightforward: as soon as you start using a mark that someone else has already registered for identical goods/services, even if you use it as a sub-brand playing second fiddle to a better known house mark, you’re always going to be sailing close to the wind.

Interviewed by Dave Thorley and republished with permission of WIPIT’s sister site, Lexis®PSL IP&IT

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