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

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

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