Victoria’s Secret Infringes Thomas Pink’s Pink Trade Marks

On 31 July 2014, Birss J handed down a judgment of the High Court, finding that famous lingerie brand Victoria's Secret had infringed registered trade marks owned by high street shirt retailer, Thomas Pink. The court's judgment considers numerous interesting aspects of trade mark law, including infringement, validity and non-use.

The full judgment is worth a read for those interested and can be accessed here http://www.bailii.org/ew/cases/EWHC/Ch/2014/2631.html.

Birss considered that Thomas Pink's trade marks were infringed, despite the fact that the two brands operate in very different sectors within the fashion industry. This is perhaps a reflection of the fact that fashion brands often diversify their goods into other sectors - Birss acknowledged that perfume and other beauty and personal care products are similar to clothing and accessories. The decision is therefore likely to be welcomed by fashion brands.

Lastly, the case is a relatively rare example of an infringement case in which the judge found that the infringer's use might have a detrimental effect on the repute of the registered trade marks.- The judge said that "[Thomas Pink's] trade mark will be associated with a mass market offering, reducing its luxurious reputation".

The key facts

Thomas Pink has been around since 1984, primarily selling men's shirts (but over time selling other goods such as ties and accessories for men and women). Thomas Pink owned both a Community and UK registered trade mark, details of which are below.

In 2004, Victoria's Secret launched a sub-brand in the UK called PINK, which now has its own PINK branded stores. In 2012, Victoria's Secret opened stores in the UK, selling casual clothing by reference to the PINK name, examples of which are below. Thomas Pink sued for infringement and the key aspects of the decision are set out below.

Non-use

Article 51(1)(a) CTMR states that the rights of the proprietor of a Community trade mark shall be revoked if within a continuous period of 5 years the trade mark has not been put into genuine use in the Community in relation to the goods or services in respect of which it is registered and there are no proper reasons for non-use. In that context, if a trade mark proprietor has made genuine use of their trade mark in relation to some of the goods or services covered by the specification, the registration may be revoked in relation to the remainder of them. Equally, wording in the specification can be amended by...