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Pink vs Pink fight could replay overseas

British shirtmaker Thomas Pink will take further legal action against Victoria’s Secret if needed to protect its brand, according to chief executive Jonathan Heilbron.

The shirt retailer last week won a trademark dispute against Victoria’s Secret in the UK regarding the use of the word “pink” as the name of the
lingerie giant’s younger customer-oriented sub-brand.

The shirtmaker, which was founded in the mid-1980s, brought legal action against Victoria’s Secret in the UK in May 2013. Victoria’s Secret has used
the brand name Pink since 2001.

At the High Court, Judge Colin Birss ruled in favour of Thomas Pink, saying the similarities in the branding could lead European customers to associate the shirtmaker with underwear, causing a “detriment to the repute” of the brand. It is not yet clear whether Victoria’s Secret will have to stop using the Pink brand in the UK, as the lingerie retailer has been granted the right to appeal.

Heilbron told Drapers: “[Further legal proceedings] is not something we take lightly as it takes a huge amount of time and resources, but we will do whatever it takes to protect our investment in Thomas Pink.”

Thomas Pink has 120 stores in 14 countries where Victoria’s Secret also trades, including the US and Canada.

“We’re a big, global business. We don’t want further litigation in other countries, but we’ll have to see what happens,” he said.

Anticipating similar lawsuits in North America, in July 2013 Victoria’s Secret sought a legal declaration of “the rights of the parties” in the US, to outline where both brands stood over the use of the word “pink”.

Thomas Pink is understood to have agreed a settlement with Victoria’s Secret so the latter can continue to use the Pink name in its current form in the
US, but if the brand is extended Victoria’s Secret could face legal challenge.

Victoria’s Secret sought similar clarification in Canada and, in January, a judge concluded the lingerie firm had “reasonable apprehension”
that its trading activities in Canada could be challenged by Thomas Pink. The shirt retailer is yet to outline its plans regarding the name in this territory.

Lee Curtis, partner at intellectual property firm Harrison Goddard Foote, said the UK ruling may not have any bearing on other territories as “it all depends on who has prior rights in that country”.

Tom Carl, senior associate in the fashion and luxury brands group at law firm Taylor Wessing, added: “This decision does not mean it’s open season for any fashion brand to trademark and attempt to monopolise colour names.

“Thomas Pink’s ‘pink’ trademark is only registered in a specific logo form - not the word itself - and the court held that it was only valid due to having ‘acquired distinctiveness’ among consumers, having been used as a brand since the company opened its doors in 1984.”

Victoria’s Secret did not respond to Drapers’ request for comment.

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