Simon Bennett, partner and Rachel Cook, associate Fox Williams LLP
PINK is Victoria’s Secret’s entry level brand, aimed at attracting younger customers to Victoria’s Secret, who will ultimately graduate to PINK’s more grown up and sexy sister. Victoria’s Secret has been selling PINK in the US for around 10 years and as a part of its expansion of the Victoria’s Secret brand into Europe in 2012, in particular the UK, PINK came too.
However, the launch of PINK set Victoria’s Secret on a collision course with another brandowner, Thomas Pink. Thomas Pink sells its range of clothing, primarily focussed on menswear and shirts, by reference to “THOMAS PINK” AND “PINK”.
Thomas Pink claimed that PINK infringed its UK and European registered trade marks, both of which featured “PINK” but were stylised.
Victoria’s Secret’s response – Victoria’s Secret is a well-known brand in its own right and, therefore, when the average consumer sees PINK with Victoria’s Secret or in a Victoria’s Secret context, he or (more likely) she would not be confused.
In addition, no link between the two would be formed by the consumer – Victoria’s Secret emphasised that it considered its activities in the UK and the EU to be simply a natural extension of its US operations and it was not seeking to take advantage of Thomas Pink’s reputation.
The Court disagreed and found that there was a likelihood of consumer confusion in relation to the majority of its use of PINK.
The main issue for Victoria’s Secret was the Court’s view on the “sign” that was being used, which impacted on significant aspects of the Judgment. When the Court reviewed the use of PINK it found that on many occasions it was used alone, as part of a slogan with no reference to Victoria’s Secret or that when Victoria’s Secret was used it was not prominent enough to make an impact on the average consumer. The use of VICTORIA’S SECRET PINK together in “locked-up format” was minimal.
Following this conclusion, it was only a small step for the Court to find that the average consumer would be confused, particularly with recent UK case law establishing that the “average consumer” represents a spectrum of consumers, at all levels of the market and of both sexes. Arguably, this broadening of the characteristics of the average consumer makes a brandowner’s position easier, as a more focussed and specific average consumer is less likely to be confused. Although, VICTORIA’S SECRET PINK, was used on the swing tags of products this was insufficient to negate the effects of the wider use of PINK without an accompanying and prominent VICTORIA’S SECRET.
Reputation based infringement
Reputation based infringement allows trade marks with a reputation in the UK or Europe to stop third parties using similar signs on identical or similar goods or services without due cause where a link is formed in the mind of the consumer and the use takes unfair advantage of or is detrimental to the distinctive character of the mark.
As the Court had already found that the use of PINK was confusing, a higher threshold than a “link” being formed, then Victoria’s Secret was always facing an uphill struggle.
The heart of Thomas Pink’s argument was that if Victoria’s Secret as a substantial brandowner was able to fill the clothing market with PINK then quickly Thomas Pink’s trade marks would cease to be linked with Thomas Pink’s products. While the Court was not prepared to accept that Victoria’s Secret “sexy sells” marketing would tarnish Thomas Pink’s reputation, it was prepared to accept the blurring or overtaking of Thomas Pink’s trade marks.
Victoria’s Secret had submitted that simply continuing its PINK brand which was already substantial and successful in the US in the UK and Europe amounted to “due cause”. This was strongly rejected by the Court, which unsurprisingly indicated that activities in a different country do not in and of themselves give a brand carte blanche to operate as it wishes in the UK or Europe if another party holds pre-existing rights.
Given the stakes, Victoria’s Secret is highly likely to appeal the Judgment, however, this is another recent instance of a high profile success in the UK Courts for a trade mark owner. Also, it further emphasises that intellectual property rights have territorial limits and even an established brand cannot simply expand its activities into another country without risk.
Victoria’s Secret could have improved its position by adapting the use of PINK, using it in locked up format – “VICTORIA’S SECRET PINK” – on all products. If “VICTORIA’S SECRET PINK” was the sign being used then the likelihood of confusion would have significantly reduced as would the prospects of Thomas Pink being able to claim reputational infringement.