Thomas Pink Limited v Victoria's Secret UK Limited  EWHC 2631 (Ch)
Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpu252, First published online: February 11, 2015
Following a trial before the High Court, England and Wales, Mr Justice Birss held that use by Victoria's Secret of the sign PINK infringed trade marks owed by Thomas Pink.
The court considered issues of infringement and validity under the Trade Marks Act 1994 and the Community Trade Mark Regulation 207/2009.
Facts Thomas Pink's trade marks
Thomas Pink (TP) asserted two trade marks against Victoria's Secret (VS):
(a) A Community trade mark (CTM) for goods in various classes including class 25 (‘clothing, footwear, headgear’):
Victoria's Secret's uses of the trade marks
From 2012 onwards, VS made various uses of the sign PINK in the UK, as illustrated below.
Thomas Pink's claims
TP argued that VS's use of PINK as described above infringed the trade marks under ss 10(2) and 10(3) of the Act (the equivalent of Articles 9(1)(b) and 9(1)(c) of the Regulation). Briefly, these provisions prevent use in the course of trade of a sign that is identical, or similar, to a registered trade mark in relation to:
goods and services that are at least similar to those for which the mark is registered where there exists a likelihood of confusion on the part of the public andVS argued by way of defence that the UK mark was invalid as lacking distinctiveness and that the CTM should be revoked for non-use.
goods and services, where the mark has a reputation in the Community/UK and the use of the sign is without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark.
The case gave rise to the following issues of interest.
Validity of the trade marks
As to distinctiveness of the UK mark, Birss J held that this mark did not have inherent distinctiveness: the mark was predominantly the word ‘pink’, which described a characteristic of clothing. In his view, the rectangular box and the lettering did not add anything visually significant.
VS sought to argue that TP had not acquired distinctiveness in the UK mark because TP had not used it in the forms in which it appeared on the register. Birss J disagreed, holding that TP was entitled to rely on use of a registered mark in a form that differed in elements which did not alter the distinctive character of the registered mark: the differences between the trade marks were minor, and the most important element was the word PINK in a special format. Accordingly, the extensive use made by TP of the CTM resulted in the acquisition of distinctiveness by the UK mark. Consequently, the UK mark was held valid.
Regarding revocation of the CTM for non-use, under Article 51(1)(a) of the Regulation, a trade mark is liable to be revoked unless it has been put into genuine use for a continuous period of five years in the Community.
In CIPA v Registrar of Trade Marks (Case C-307/10, ECLI:EU:C:2012:361, the ‘IP Translator case’), the Court of Justice of the European Union (CJEU) ruled on the scope of protection conferred by a trade mark with a specification that uses ‘class headings’. One of the CJEU's rulings was that the goods and services for which an application is made to register the trade must be identified with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark. Relying on this decision, VS contended that the class heading for class 25, ‘clothing’ was too vague.
Birss J disagreed. He held that ‘clothing’ was a sufficiently clear and precise term. Further, in light of TP's evidence of use in relation to a wide range of garments, ‘clothing’ was a fair description of TP's actual use. Accordingly, there had been genuine use in respect of clothing.
While VS was successful in arguing that a number of other goods should be removed from the specification on the basis of non-use, this outcome did not affect the question of infringement.
Infringement under s 10(2)/Article 9(1)(b)
Following Specsavers v ASDA  EWCA Civ 24, the context in which the defendant's sign appears is relevant to the question of infringement under s 10(2)/Article 9(1)(b). In that case, the Court of Appeal held at paragraph 87 that, ‘[i]n assessing the likelihood of confusion … the sign is not to be considered stripped of its context’.
VS submitted that it was material that each garment had a swing tag or label that featured the words VICTORIA'S SECRET, that the garments were sold in shops which featured numerous prominent references to VICTORIA'S SECRET, and that VS's PINK branded stores were in some instances either part of, or adjacent to, a store branded VICTORIA'S SECRET. However, the judge held that the post-sale context was a realistic and fair context in which to consider the effect of the use of the sign on clothing: where PINK was emblazoned prominently on a garment, the sign was meant to be seen by persons other than the wearer after purchase. The use of VICTORIA'S SECRET on swing tags, on labels and in relation to VS's stores was therefore not part of the assessment for these uses of PINK. In contrast, use of PINK on the swing tags and garment labels was to be considered in the context of VS's stores because that was where the average consumer would encounter them. For the store sign, it was fair to consider the front of the store.
Turning from the context of the allegedly infringing uses to the likelihood of confuson, Birss J held that the use of PINK on VS's clothing gave rise to a likelihood of confusion with TP's trade marks. The goods in question were identical. The sign PINK would not be seen by the average consumer as purely descriptive or decorative; some origin significance would be perceived. Using PINK in a device or slogan slightly reduced the similarity with TP's trade marks—but not enough to avoid a likelihood of confusion. Therefore such use infringed.
Similarly, the store front branding infringed the trade marks: the use of VICTORIA'S SECRET here (not visible in the photograph above) was not sufficiently prominent to dispel the risk of confusion. However, the use of PINK in conjunction with VICTORIA's SECRET on swing tags and labels did not infringe under s 10(2)/Article 9(1)(b). In this instance, the retail context was determinative of confusion. Consumers encountering the sign PINK here knew they were in a VS store and the swing tags, labels and receipts were all clearly marked VICTORIA'S SECRET.
So far as concerns the infringement claim under s 10(3)/Article 9(1)(c), given his findings in relation to s 10(2)/Article 9(1)(b), Birss J considered the use of PINK with VICTORIA'S SECRET only on swing tags and labels in VS stores.
In his judgment, TP's trade marks had sufficient reputation for the purpose of these provisions: TP had established a link between its marks and VS's use since consumers would see a sign reminiscent of them. VS's use was without due cause. In relation to detriment, VS's business was said to aim for ‘sexy, mass market appeal’; as a result of VS's use, TP's trade marks would be associated with a mass market offering, thereby reducing their luxurious reputation.
The finding that a trade mark may acquire distinctiveness through use of a non-identical sign may assist trade mark owners who, as was acknowledged at paragraph 95 of the judgment, ‘do not always and consistently use a mark in precisely the form as registered’. Birss J added that proprietors should not be barred from relying on oral use of prominent parts of a word or device mark to support the acquisition of distinctive character.
In light of Birss J's finding that ‘clothing’ was sufficiently clear, it remains to be determined whether the CJEU's decision in IP Translator has the effect that a lack of clarity in the specification is a basis for revocation of a trade mark (in addition to being a ground for refusal to register the mark). This point is the subject of two conflicting judgments: Total Ltd v YouView TV Ltd  EWHC 1963 (Ch) and Stichting BDO v BDO Unibank, Inc  EWHC 418 (Ch).
Finally, the case illustrates that the applicable context in which the defendant is deemed to use its sign under s 10(2)/Article 9(1)(b) remains a contentious issue and may directly determine infringement. Here, the finding as to likelihood of confusion for the uses of PINK on clothing (where only the post-sale context was held relevant) may be contrasted with that on the swing tags and labels (in which prominent pre-sale use of VICTORIA'S SECRET counteracted the risk of confusion). The rationale for this distinction is expected to receive further consideration when VS's appeal is heard later this year.
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