In Thomas Pink Limited v Victoria’s Secrets UK Limited, the British shirt maker issued court proceedings for trademark infringement against lingerie retailer Victoria’s Secret over the right to use the word “PINK”.
Thomas Pink is the registered proprietor of the trademark “PINK”. Victoria’s Secret used a similar logo as a sub brand and opened UK retail units.
Victoria Secrets counterclaimed for revocation of the UK mark for non-use and invalidation for a lack of distinctive character. The court had to consider whether Thomas Pink could rely on use of the mark in a different form to that later registered.
The court said that proprietors do not always consistently use a mark in the precise form it is registered. There was no good reason why European trade mark law should be so restrictive as to require that the use relied on for a mark to acquire distinctive character had to be use of the mark as exactly registered.
The court found that Victoria’s Secret’s use of “PINK” in the EU both on its products and as the name of its stores was an infringement of Thomas Pink’s registered trademark.
It is unlikely that this will open the floodgates to allow other businesses in the retail sector to monopolise on coloured names. The Thomas Pink trademark is registered in a specific logo form (not the word itself) and it was a result of the trademark having acquired distinctiveness with consumers and being used as a brand for such a long time that Thomas Pink was successful in this case.
It is also interesting that as a result of the judgment in favour of Thomas Pink, the court awarded them 90% of their budgeted costs.
Disclaimer: All legal information is correct at the time of publication but please be aware that laws may change over time. This article contains general legal information but should not be relied upon as legal advice. Please seek professional legal advice about your specific situation - contact us; we’d be delighted to help.
