Thomas Pink Ltd v Victoria's Secret UK Ltd

A trade mark injunction must be specific, fair and proportionate. It should not include a carve-out that effectively declares non-infringement for forms of use which the court has not determined.

A publication order may be stayed where immediate publication would deprive a party of a meaningful application for a stay pending appeal. An Island Records v Tring disclosure order should require a fair estimate of attributable costs and an explanation of its calculation, but need not prescribe an unnecessary costs breakdown.

Where agreed costs budgets were substantively approved, a formal omission should not defeat their effect. An interim payment should remain an irreducible minimum, while giving substantial weight to the approved budget.

This was a first-instance consequential judgment following the claimant’s success in trade mark infringement proceedings. The court determined the drafting of injunctions, publication under Article 15 of the Enforcement Directive, an Island Records v Tring information order, confidentiality under CPR 31.22, and costs.

The defendant sought a proviso excluding all use of the lock-up sign VICTORIA’S SECRET PINK from the injunction. It also sought to defer publication and disclosure pending a proposed appeal. The parties disputed the information needed to elect between damages and an account of profits, and the effect of agreed costs budgets on a payment on account.

1. Injunction. The court refused the proposed proviso. Earlier findings concerned the lock-up sign VICTORIA’S SECRET PINK on a particular Facebook page and in its particular context. A general exclusion would confer the benefit of a non-infringement finding for other uses, such as use on clothing, which the court had not made. That result would not be fair or proportionate. The court nevertheless made clear that it had not found every use of that lock-up sign to infringe.
2. Publication. The publication order under Article 15 of the Enforcement Directive was stayed until the October hearing. Making it immediately would make futile the defendant’s proposed application to stay publication pending appeal. The parties remained free, subject to the general law, to publicise the public judgment.
3. Information order. The defendant had to provide the Island Records v Tring information within 56 days. Its chief financial officer or financial director had to verify it. The defendant had to give a fair estimate of all costs attributable to the infringing goods and explain the calculation. A prescribed further breakdown was unnecessary, subject to liberty to apply if the claimant could not fairly elect on the information supplied. Disclosure was not stayed.
4. Confidentiality and costs. A permanent CPR 31.22 order was justified for confidential financial breakdowns and style-guide information useful to counterfeiters. The agreed budgets were, in substance, approved and a costs-management order was treated as having been made. The claimant’s increased budget of £678,009.10 was approved. Applying the irreducible-minimum principle in Mars v Teknowledge, but giving substantial effect to costs budgeting, the court ordered a payment on account of 90% of £644,829.10, rounded up to the nearest thousand.

The underlying action began in the Patents County Court and was transferred to the High Court in October 2013. This consequential ruling followed the main judgment in the same proceedings, [2014] EWHC 2631 Chancery.