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Protecting British Brands: Thomas Pink v Victoria’s Secret

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About The Author

Helen Morse (Writer)

Helen is studying Law (European & International) LLB at the University of Sheffield, now entering her final year having spent an Erasmus year at the University of Vienna, Austria. Helen is interested in international and commercial law. Outside of law, Helene is a keen sports woman, playing at county level.

In July 2014 the High Court ruled in favour of the British clothing brand, Thomas Pink, in an action against lingerie specialist Victoria’s Secret for trade mark infringement of the word ‘PINK’. The case offers a useful overview of trade mark law in the UK and raised some interesting issues for future infringement cases such as this. Before delving into the specifics of the case further, it will be worthwhile to set out the trade mark law relevant to understanding the case.     

The Law

What is a Trade Mark?

The European Trade marks Directive defines a trade mark as:

any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such a sign is capable of distinguishing the goods or services of one undertaking from those of other undertakings.

Essentially, trade marks guarantee the origin of a business’ goods or services. They are not restricted to any form, the trade mark need only serve to distinguish the goods or services of one business from the goods or services of another. This means a trade mark can be, for example, a word or words; a logo or design; a colour or combination of colours; the shape of the product or its packaging; or even in some cases a musical composition used in an advert.

Protection

There are two forms of protection of trade marks in the UK; statutory protection and passing off.

Businesses can protect their trade marks in the UK by registering them in accordance with the provisions of the Trade Marks Act 1994. In addition to this, UK businesses can also protect their trade marks throughout the whole of the EU, including the UK itself, by registering it as a ‘Community Trade Mark’ or CTM, administered by the Office for Harmonization in the Internal Market (OHIM). CTMs are registered under one of 45 different classes of goods or services. The classification list assigns goods to classes 1 to 34 and services to classes 35 to 45. For example, Class 25 is 'Clothing; footwear; headgear' and Class 15 is 'Musical instruments'. It is common for businesses to register their trade marks both as a CTM and domestically.

Trade marks, or more specifically the reputation of a business conducted under its trade mark, is also protected by the law of passing off. There is no statute governing passing off, instead it has developed in the UK through case-law. The law of passing off prevents businesses tarnishing the goodwill of another business through misrepresentation of its trade mark.

Infringement

A UK registered trade mark can be infringed in three ways, as set out in section 10 of the Trade Marks Act 1994:

  • use of a sign identical to the registered trade mark in relation to goods or services also identical with those for which it is registered (s. 10(1));
  • use of a sign which is identical or similar to the registered trade mark in relation to goods or services identical or similar with those for which it is registered and where there exists the likelihood of confusion by the public (s. 10(2)); or
  • where the registered trade mark has a reputation in the UK and use of a sign which is identical or similar to it will cause an unfair advantage or is detrimental to its reputation (s.10(3)).

Infringement of CTMs is covered by Article 9(1) of Council Regulation (EC) No 207/2009, which has direct effect meaning businesses can automatically rely on its provisions before a national court. As is often the case, the domestic law has been drafted in line with the relevant EU provisions. Therefore a CTM can be infringed in the same three ways as set out above, the scope is just broader covering all member states of the EU, rather than just the UK.

UK courts have established a three-stage test in order to establish whether passing off has taken place. There must be:

  • goodwill attached to the goods or services of the claimant;
  • a misrepresentation by the defendant leading the general public to believe that the goods or services offered by him are in fact those of the claimant; and
  • proof the misrepresentation damages the goodwill of the claimant.

The Case

The Parties

Thomas Pink Limited began trading in London in 1984 and is most famous for its sale of tailored shirts. Over the years the company has grown, trading across Europe and the US, and diversified its range, now also selling other items of clothing. All of its products are sold under, or by reference to, the words ‘Thomas Pink’ or ‘PINK’. Thomas Pink is the registered proprietor of a CTM since 2004 for the logo shown below.

 2311.png

The company also has a UK registered trade mark since 2010 for the following marks.

2312.png

The action was against Victoria’s Secret UK Limited which is part of a group which sells the famous Victoria’s Secret line of lingerie. Victoria’s Secret began in the US in the 1970s, but now has a worldwide reputation. In 2004 the company launched a sub-brand in the US called ‘PINK’ selling items of clothing such as sweatshirts and trousers as well as lingerie and nightwear aimed at the typical ‘college girl’. The garments of this new range often have the work ‘PINK’ displayed prominently on them, shown in the pictures below, but they always carry the words ‘Victoria’s Secret’ somewhere.

2314.png

PINK products are sold in PINK stores either attached to and accessed from the main Victoria’s Secret shop or in separate PINK outlets which have the words ‘Life is PINK is life’, with ‘Victoria’s Secret’ below in very small writing, above the store window. Sometimes ‘Victoria’s Secret’ is barely visible and the word ‘PINK’ is certainly the prominent word of the sign, as the picture below demonstrates.

2313.png

In 2012 Victoria’s Secret began a project to open retail outlets in the UK with its first store opening on London’s Bond Street which also brought the new sub-brand PINK and its outlets to the UK market.

The Claim

Thomas Pink brought a claim against Victoria’s Secret for passing off as well as trade mark infringement under s.10 (2) and s.10 (3) of the Trade marks Act 1994 and article 9 of Council Regulation (EC) No 207/2009 for its CTM. Thomas Pink argued that the average customer was likely to mistake Victoria’s Secret PINK products for its own, or vice versa. In support of this claim Thomas Pink submitted evidence of actual customer confusion where customers tried to return Victoria’s Secret goods to its stores. In addition to this Thomas Pink claimed that its reputation for high-quality and traditional values would be tarnished by mistaken association with a lingerie brand that has been known to be involved with scandals, such as the infamous strap line ‘sexy sells’.  

In response, Victoria’s Secret raised two defences. First it claimed that the UK trade mark was invalid under section 3 (1)(b) and 3 (1)(c) of the Trade Marks Act 1994, which states that marks can be refused registration if they lack a distinctive character or merely serve to describe the goods or services. Victoria’s Secret argued that the work ‘PINK’ was purely descriptive and the trade mark had not acquired distinctiveness as Thomas Pink used marks of a different design and combination of colours on its products from the registered marks. Secondly, Victoria’s Secret submitted that Thomas Pink’s CTM should be revoked on grounds of non-use under Article 51 of Council Regulation EC 207/2009. Thomas Pink’s CTM was registered under Class 25 ‘Clothing; footwear; headgear’ which Victoria’s Secret argued was too wide and vague for Thomas Pink’s products, thus putting forward the claim that the CTM was not being used correctly under its registration. In addition to these defences, Victoria’s Secret also sought to rely on the fact that, although relations between the two companies in the US are arguably strained, they had still both been trading there for a number of years with no confusion from the general public.

The Decision

The court dealt with the two defences first because if they were successful then Thomas Pink would only be able to rely on its claim for passing off and its infringement claims would  be irrelevant.

The court dismissed Victoria’s Secret’s first defence because even though the word ‘PINK’ was not of distinctive character alone, it had acquired distinctiveness by use over ‘time of production’ (s. 3(1) Trade Marks Act 1994). The argument that the ‘PINK’ marks were used in a different way to its registered form was unsatisfactory in the opinion of the court as the differences were ‘immaterial’ and would be seen as insignificant by the average customer.

The second defence was also rejected by the court, as the judge did not deem Class 25 as too broad to describe the products Thomas Pink’s CTM was registered under. Even though Thomas Pink is still most famous for its sale of shirts, the company sells a number of different garments including sweatshirts, jackets, pyjamas and other accessories to justify being registered under a class for clothing.  

Having dealt with the defences, the court moved on to assess the infringement claims. The court held that the products sold by the two companies were ‘identical’ and the ‘PINK’ marks were ‘similar’ enough to cause confusion from the public, amounting to infringement of s. 10(2) and the corresponding EU provision. The court did note that Victoria’s Secret PINK products always had ‘Victoria’s Secret’ somewhere on them, but did not think this was enough to amount to the marks being fairly characterised as ‘Victoria’s Secret PINK’ or ‘PINK Victoria’s Secret’, which would have distinguished it from Thomas Pink’s ‘PINK’ marks. Equally, even though the products were always sold in stores attached to or next to the main Victoria’s Secret shops, the court felt the words ‘Victoria’s Secret’ were not prominent enough on the shop signs or on the products themselves to avoid confusion. The court dismissed the argument that the two brands had coexisted in the US with no confusion, as the judge was not satisfied that the ‘trading conditions and the relative positions of the parties in the US are sufficiently similar to the UK or EU for this to be a matter on which much weight can be placed.’

The court also held that Victoria’s Secret had infringed Thomas Pink’s trade mark under s. 10 (3) and the equivalent EU law as association with each other could bring Thomas Pink into disrepute. The court was satisfied that Thomas Pink is seen as a luxurious brand, whereas Victoria’s Secret is associated with a sexy, mass market production. The court felt this negative association with Victoria’s Secret could alter customer behaviour and cause Thomas Pink to lose out economically.

In light of the successful infringement rulings, the passing off claim was not considered.

Comments

A number of interesting points can be taken away from this trade mark infringement case. Firstly, the fact the court paid very little attention to the status quo in the US highlights that a UK position cannot necessarily be drawn from an overseas one. This will be of particular relevance to foreign businesses wishing to launch in the UK as the existence of third-party intellectual property rights must be assessed on a country-by-country basis. It shows that trade mark protection is inherently territorial, and arguably biased towards the home brand. However, a trade mark ruling is also limited to its jurisdiction. Therefore this judgement is unlikely to offer much assistance to Thomas Pink if a similar action against Victoria’s Secret were to be pursued in the US, for example, which is arguably more damaging purely for the reason the US is a far larger market.  

Secondly, the case confirms that a trade mark can acquire distinctiveness even if used in a slightly different format from the registered mark, as long as the differences are ‘immaterial’. It was stated that the same rational would also not prevent a trade mark gaining the required level of reputation needed under section 10(3). However, whether this rule would also apply to a business obtaining ‘goodwill’ with respect to its products or services under the law of passing off was not discussed, but I cannot see any reason why it should not.

Finally, Thomas Pink called a number of witnesses in support of its claim of customer confusion between the two brands, but all were employees not the actual confused customers. The court did criticise this for being weak, but interestingly it was persuasive all the same. It was stated 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.’ The acceptance by the court of such evidence in infringement cases may be of some comfort to other businesses who may struggle to find or convince members of the public to stand before the court and give evidence.

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Tagged: Commercial Law, Intellectual Property

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