British shirtmaker Thomas Pink has won a trademark dispute against Victoria’s Secret over the use of the word “pink” for the lingerie giant’s sub-brand in the UK.
Victoria’s Secret has used the brand name Pink, which is aimed at younger women, since 2001. The branding includes an online community, hosted on the lingerie firm’s website, called “Pink Nation”.
In a verdict announced today (July 31), Judge Colin Birss ruled in favour of Thomas Pink, saying the similarities in the branding could lead customers in Europe to associate the shirtmaker with underwear, which would cause a “detriment to the repute” of the brand.
Jonathan Heilbron, president and chief executive of Thomas Pink said the company will “continue to protect the considerable investment that has been made into building Thomas Pink into a leading luxury clothing brand.”
Thomas Pink, which was set up in the mid-1980s, brought legal action against the lingerie firm in the UK over its use of the word “pink” in May 2013.
The following month, Victoria’s Secret filed a complaint asking for US courts to “clarify the rights of the parties, allowing them to continue the peaceful coexistence that has been in place for many years”.
The document noted “the UK action placed Victoria’s Secret at imminent risk of a suit on the same grounds in the US”.
In the wake of today’s judgement, Lee Curtis, partner at intellectual property firm Harrison Goddard Foote, said the UK verdict may not have any bearing on a case in other territories.
“They are disputing across the world but the decision might not go the same way in the US or Canada, it all depends on who has prior rights in that country,” he said, adding: “I wouldn’t be surprised if Victoria’s Secret appeals the decision.”
Sarah Wright, partner at intellectual property law firm Olswang, agreed.
“Victoria’s Secret is likely to appeal the decision but with regard to cases in the US and Canada today’s verdict puts Thomas Pink in a strong negotiating position.”
Matthew Dick, Partner at law firm D Young & Co said Victoria’s Secret may have to drop use of the Pink branding altogether in the EU.
He added: “[Victoria’s Secret’s] use of the Pink mark in relation to clothing products was held to be unlawful, not only because it could lead to confusion in the marketplace, but also because such a mass market offering reduces the luxurious reputation of Thomas Pink’s trade mark.”
Tom Carl, senior associate in the fashion and luxury brands group at international law firm Taylor Wessing, said: “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.”
Simon Bennett, intellectual property partner at law firm Fox Williams added: “The judge found that the evidence of confusion between the two brands was not significant yet still found for Thomas Pink. This continues the recent trend of cases such as Jack Wills v House of Fraser where despite there being little or no actual confusion among members of the public the Court is still willing to find that there is infringement between two brands.”