Thomas Pink, a fashion label and store, started trading in London in 1984. The core of its business is the sale of shirts which are worn mostly by professional men. Thomas Pink has numerous trade mark registrations around the world and more importantly a European trade mark (“CTM”) and UK trade mark for “PINK”.
In 2004, Victoria Secret launched a sub-brand in the USA called “PINK”. This “PINK” brand is aimed at the college girl and the clothing range includes t-shirts, sweatshirts and trousers as well as lingerie, nightwear and swimwear.
In 2012, Victoria Secret began to implement a project to open retail outlets in Europe, starting in the UK. Some of these stores were branded “PINK” and were located near their Victoria Secret stores. All clothing items of the “PINK” sub range were branded with Victoria Secret somewhere on the clothing garment.
Thomas Pink instituted trade mark infringement and passing off proceedings against Victoria Secret based on their registered trade marks and long standing trade in clothing in the UK and Europe under the brand PINK. They believed that their brand has generated goodwill and reputation which is attached to their business and trade marks and is identified in the minds of the public with PINK. They further argued that Victoria Secret had only recently entered into the UK and Europe markets with its “PINK” brand which ought to be exclusive to Thomas Pink in light of its trade mark registrations and use of “PINK”.
Thomas Pink showed how the average consumer would be confused by the presence of the two “PINK” stores in the marketplace and how the average person may believe there is a link/association between the “PINK” stores. Included in these examples was the returning of items of clothing to the wrong “PINK” store or looking up the telephone number of a “PINK” store in the telephone directory.
Victoria Secret defended this case by stating that Thomas Pink is a specialist shirt maker for professionals and their target market is different to that of the “college girl”. It further argued that Thomas Pink’s trade mark registrations were not for the word “PINK” alone and that the goods covered by its trade marks were far too broad. It raised further defenses and even attacked Thomas Pinks marks based on non-use.
The outcome of this lengthy court battle? The court found that Victoria Secrets use of “PINK” in the EU, both on its goods and as the name of its stores, is an infringement of Thomas Pink’s registered trade mark rights.
Moore Attorneys currently assists Thomas Pink with its trade marks in South Africa. Please feel free to contact Moore Attorneys for a quotation of protecting your brand in the EU.
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