OPINION: Tim O’Callaghan on trademark protection

Tim O’Callaghan is a partner in Druces LLP, specialising in advice to the fashion business. Here, he writes about colour protection following the Victoria’s Secret vs Thomas Pink case.

Intimate apparel brands reading reports of the recent High Court decision in the Thomas Pink vs Victoria’s Secret case may be forgiven for fearing legal action if they design a line of lingerie and name it after a colour, but would their fears be justified? In short, the answer is no.

The Thomas Pink case, in lawyers parlance, ‘turned on its own facts’ (related to the very particular circumstances of the case).
As Lingerie Insight reported at the time: “Thomas Pink, which is owned by luxury conglomerate LVMH, began legal proceedings in July last year after Victoria’s Secret opened UK stores devoted to its VS PINK line on London’s Bond Street and in Westfield shopping centres.

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Victoria’s Secret argued that when its customers encountered Pink, it was always in the context of its name, which ruled out any conceivable possibility of confusion. But Judge Colin Birss ruled that consumers in Europe might associate Thomas Pink with underwear, which would cause a “detriment to the repute” of its brand.”

The first thing to note here is that the case related to the word PINK as opposed to the Pantone itself. It is a requirement that to be capable of registration a trademark cannot be descriptive of the product being protected. Hence, an application for trademark ‘blue lingerie’, for a brand that produced lingerie that was coloured blue, would be unlikely to succeed in being registered. In this case, PINK was not descriptive of the garments sold by Thomas Pink and was capable of registration.

As Thomas Pink counts underwear amongst its repertoire of products, it was certainly conceivable that some confusion may have arisen on the part of shoppers.

This element of confusion on the part of shoppers is often key in these cases and this was no exception. In this case there was evidence before the court of actual confusion on the part of shoppers.

This case can be contrasted with the other high-profile fashion ‘colour’ trademark case ; the recent Christian Louboutin vs YSL case. Although decided in the US, this case was a significant ruling that a brand cannot completely monopolise a particular colour. In this case, the distinctive Louboutin red sole was challenged by YSL, which produced a monochrome red shoe with the same ‘Louboutin red’ on the sole and the uppers.

Despite being extremely widely known to consumers, the New York appeal court confined Louboutin’s protection to contrasting soles and uppers and ruled that YSL’s monochromatic shoes, despite being in ‘Louboutin Red’ did not infringe Louboutin’s trademark.

The interests of free-trade dictate that brands are seldom able to monopolise a colour for a product, and where they are afforded such protection by international trademark registries and the courts, it is only ever in very restricted circumstances, even if the particular colour has a strong brand-association in the public mind.

It is important to consider this when formulating your brand, not just to try to anticipate any potential trademark infringement action (as Victoria’s Secret should’ve done), but also to enable you to have a brand name or logo that is capable of registration as a trademark. Not only is a registered trademark a great deterrent against potential infringers; having a registered trademark can often lead to the swift resolution of disputes with infringers.
In this context, it is worth reminding ourselves of the requirements of any registered trademark.

A trade mark may be refused registration if:
1. It is not a sign.
2. It cannot be represented in graphic form.
3. It is devoid of distinctive character.
4. It consists exclusively of signs or indications that may designate the kind, quality, quantity or other characteristics of the goods or services.
5. It consists exclusively of signs or indications which have become customary in the current language or in trade practices.
6. It consists exclusively of a shape, which results from the nature of the goods, or which is necessary to obtain a technical result, or which gives substantial value to the goods.
7. It is deceptive.
8. It is prohibited from use in the UK by any rule of law or by any provision of EU law.
9. It is a specially protected emblem.
10. It was applied for in bad faith.

Intimate apparel brands who want to use a colour in their brand (either word or actual colour itself) are probably safe in doing so. However, they should not expect to be able to register that colour as a trademark.

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