Thomas Pink Limited v Victoria's Secret UK Ltd

A trade mark proprietor may rely on use of a mark in a form differing from the registration where the differences do not alter the mark’s distinctive character. Genuine use must be assessed fairly by reference to the goods actually marketed, and a broad specification such as “clothing” may be justified by a sufficiently broad range of garments and styles. In assessing infringement, the sign must be considered in its realistic context, including post-sale presentation, but hidden labels or internal shop features will not necessarily affect the perception of a prominent sign on a garment. A well-known house mark may prevent confusion in some contexts, yet fail to dispel confusion where a secondary sign is independently prominent. Territorial prior use and overseas coexistence do not ordinarily establish due cause for use infringing European trade mark rights.

Thomas Pink Limited, a retailer of clothing and accessories, owned Community and UK device marks prominently featuring the word PINK. Victoria’s Secret UK Limited operated PINK-branded clothing stores and sold goods bearing PINK, sometimes with VICTORIA’S SECRET in smaller lettering.

The claimant sought relief for infringement under Trade Marks Act 1994, sections 10(2) and 10(3), and under article 9 of the Community Trade Mark Regulation (No 207/2009). The defendant counterclaimed for revocation for non-use and invalidity for lack of distinctiveness, and relied on acquiescence and due cause. The central issues concerned the scope and validity of the claimant’s marks, the relevant context of the defendant’s use, likelihood of confusion, link, due cause and detriment.

1. Validity and specification. The Community trade mark had been put to genuine use across a sufficiently broad range of garments and accessories to justify “clothing” in Class 25. Use of the mark was also established for wellington boots, rather than footwear generally, and for the other categories identified in the amended specification.
2. “Clothing” was sufficiently clear and precise. The court therefore rejected the challenge based on inherent vagueness and did not need to resolve the conflicting approaches in Total Limited v YouView TV Limited and Stichting BDO v BDO Unibank.
3. Under section 3(1) of the Trade Marks Act 1994, the UK mark was prima facie devoid of distinctive character and descriptive of a characteristic of clothing. Nevertheless, use of the Community mark in a form differing only in immaterial respects was capable of supporting acquired distinctiveness of the UK mark. The extensive evidence established acquired distinctiveness for all registered goods and services.
4. Section 10(2) and article 9(1)(b). The average clothing consumer pays moderate attention to branding and does not scrutinise fine print. The relevant context depends on the particular use. A prominent PINK sign on clothing is encountered post-sale, without the benefit of a swing tag, neck label or shop interior. The sign was highly similar to the claimant’s marks, and the goods were identical or similar. Those uses, slogan uses on goods, free-standing PINK shop facias, the brass plate and certain products bearing very small VICTORIA’S SECRET lettering infringed.
5. By contrast, swing tags and labels viewed inside the defendant’s shops were sufficiently qualified by the repeated and prominent retail context of VICTORIA’S SECRET to avoid a likelihood of confusion. Facebook use of VICTORIA’S SECRET PINK in lock-up format would likewise not have caused confusion even if targeted at the United Kingdom or European Union.
6. Section 10(3) and article 9(1)(c). The claimant had a major reputation for luxury shirts and a sufficient reputation for specified casual clothing, knitwear, ties, boxer shorts and socks. A link existed in relation to swing tags and labels because relevant consumers would call the claimant’s PINK mark to mind. The defendant lacked due cause: its United States use, overseas coexistence and absence of United States confusion did not establish a right to infringe in the European Union. The use created a serious risk of detriment to the claimant’s distinctive character and repute.
7. The acquiescence defence failed because the relevant use had not continued for five years and the defendant’s United States use did not establish use of the relevant signs in the United Kingdom or European Union. The court did not need to determine passing off. The claimant succeeded.