Red faces over PINK knickers? Victoria's Secret has a tough time in court

Cometh the hour, cometh the (pink) Kat ...

News has now began the haemorrhage through the blogosphere that British-based shirt-maker Thomas Pink has emerged happy and glorious from a spot of litigation against US intimate apparel company Victoria's Secret. This Kat has received, several times over, the judgment of Mr Justice Birss, in Thomas Pink Ltd v Victoria's Secret UK Ltd [2014] EWHC 2631 (Ch), in the Chancery Division of the High Court, England and Wales (doubling as the Community Trade Mark Court), but he has been too busy looking at the pictures doing his tax returns to read the judgment, which is rather long (217 pages plus annexes). Meanwhile, he is happy to plunder and adapt the text prepared by his friend and colleague Sarah Wright together with Kaisa Mattila at Olswang LLP, which was posted on the firm's Fashionista-at-Law weblog today. In short, as Sarah and Kaisa explain:

In a judgment delivered by Mr Justice Birss yesterday [which you can access here or download here], Victoria’s Secret was found to have infringed Thomas Pink’s trade marks for “PINK”. As reported in Business Week shortly after the judgment was handed down, Mr Justice Birss ruled that consumers in Europe might come to associate the traditional luxury shirt-maker with mass-market goods and underwear, which would cause detriment to the repute of its brand. “For example consumers are likely to enter one of the claimant’s shops looking for lingerie and be surprised and disappointed when they find they have made a mistake”, Birss J said.

Thomas Pink brought this action in response to the opening by Victoria’s Secret of two London stores, one of which stocks its “college girl” range of clothing, lingerie and accessories branded PINK, a range which was already widely available in the USA. The court considered four different types of use of the PINK brand by Victoria’s Secret, illustrated above, and found that use of the mark on garments and on store fronts (uses 3 and 4) infringed Thomas Pink’s trade marks. Other uses which combined “PINK” with the well-known “Victoria’s Secret” mark (eg in-store signage and social media pages, represented by use 2) did not infringe, as those types of use were unlikely to result in confusion. As regards use 1, Victoria's Secret maintained that it had used its mark in a non-confusing manner and also that Thomas Pink had acquiesced in this use. However, Thomas Pink's denial of this was accepted by the court.

In its defence, Victoria’s Secret sought to invalidate Thomas Pink’s registrations on the basis that the mark PINK was descriptive and had not acquired distinctiveness. Since Thomas Pink’s UK and Community trade mark (CTM) registrations were both device marks, the company argued that those marks were not exclusively descriptive. Notwithstanding this, Mr Justice Birss agreed that, given the nature of the mark PINK, it needed to have acquired distinctiveness to remain on the register. Crucially, however, he held that the mark had in fact acquired a distinctive character and was therefore validly registered. Victoria’s Secret’s counsel further argued that elements of Thomas Pink’s registrations should be revoked for non-use. While the Court agreed that there were some goods within Thomas Pink’s specification where there had been no genuine use, the vast majority of the goods were not revoked since there had been use (albeit by reference to a mark in a slightly different form to that registered). Judge Birss commented that, “Proprietors do not always and consistently use a mark in precisely the form as registered. This is recognised in s. 46(2) [of the UK's Trade Mark Act 1994] which permits minor variations to be taken into account in order to avoid revocation of the mark”.

Victoria’s Secret had sought to rely on the fact that the two brands have been coexisting on the US market for many years without confusion. However, Mr Justice Birss held that the position was different on the European market, where it was likely that the average consumer would be confused by the mark PINK being emblazoned on the defendant’s clothing. The presence of the well-known mark VICTORIA’S SECRET on some of those goods did not avoid infringement, due to the prominence of the word PINK which was strongly associated with the claimant.

One interesting part of the judgment relates to the evidence of confusion adduced by Thomas Pink employees. Thirteen members of staff gave evidence recounting incidents where members of the public appeared to be confused, but none of the consumers themselves gave evidence. The judge commented that 

“the claimant’s evidence of actual confusion is not of sufficient weight to lend any significant positive support to the claimant’s case but it does play an important negative role in this action. Its existence is sufficient to prevent the defendant from credibly contending that there is no evidence of actual confusion in the UK or the EU”. 

Historically, UK Courts have been very strict about how consumer evidence can be adduced in trade mark cases. The acceptance by the Court of this kind of evidence, albeit the limited probative value of it, will be welcomed by brand owners who often find it hard to convince members of the public to get involved in Court proceedings.

Birss J’s judgment confirms that confusion between trade marks (including by way of association) can be found to arise even where the fashion brands target very different segments of the market. 

The Fashionista blog predicts that this is unlikely to be the end of the story, with a further appeal here and/or further proceedings in the United States unless the parties can use yesterday’s judgment to form the basis of a coexistence agreement. This Kat is, as is well known, very enthusiastic about coexistence agreements, and he suspects that this is one set of facts that might favour such an outcome since the parameters of a non-confusing use of the P-word by Victoria's Secret can easily be envisaged, and Merpel adds that any such agreement might want to say a bit about bidding for "pink" as an internet keyword too.

A further blogpost on this ruling is likely, since it covers so many different issues. At nearly 22,000 words in length, that's certainly to be expected.