Thomas Pink Ltd –v- Victoria's Secret UK Ltd

British retailer Thomas Pink has emerged victorious in its most recent trade mark dispute with American lingerie giant Victoria's Secret in the High Court case of Thomas Pink Ltd v Victoria's Secret UK Ltd [2014] EWHC 2631 (Ch).

Thomas Pink is a well-known retailer, principally of luxury work shirts but also of other clothing, that sells goods under the names Thomas Pink and PINK. It is the proprietor of Community and UK trade mark registrations both of which prominently feature the word 'PINK'.

In 2004 the Victoria's Secret group launched a sub-brand in the USA called PINK. The brand owners sell a wide range of clothing targeted at 'college girls' aged between 18 and 25. Victoria's Secret opened its first European store on Bond Street in London in 2012. It was this European expansion that led to Thomas Pink's claim for trade mark infringement. Victoria's Secret counterclaimed that the marks were invalid and should be revoked for non-use.

Revocation

Under Article 51(1)(a) of the CTM Regulation 207/2009/EC (CTM Regulation) a CTM will be revoked if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

Victoria's Secret successfully contended that a number of categories of goods should be revoked from the specification of the claimant's CTM for non-use: Class 14 was reduced from jewellery and cufflinks to cufflinks; Class...