Victoria’s Secret loses Pink trademark case

Victoria’s Secret could be forced to withdraw its PINK brand from stores after British shirt maker Thomas Pink won a trade mark case against the retailer.

A High Court ruled on Thursday that Victoria’s Secret’s use of the name PINK infringes Thomas Pink’s UK and European Community trademarks.

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 firmly in the context of its famous name, which ruled out any conceivable possibility of confusion.

But Judge Colin Birss ruled that customers in Europe might associate Thomas Pink with underwear, which would cause a “detriment to the repute” of its brand.

Thomas Pink president and CEO Jonathan Heilbron said: “We are delighted with the outcome of this case, and will continue to protect the considerable investment that has been made into building Thomas Pink into a leading luxury clothing brand.”

Speaking about the decision, Tom Carl, senior associate in the fashion and luxury brands group at international law firm Taylor Wessing, said: "This decision gives Thomas Pink relative control over the use of the word pink as a brand in the fashion sector, and means that other traders will need to think carefully about how they use similar branding. However, it doesn’t give the company a complete monopoly – there were a number of specific factors in this case and other scenarios will have to be considered on a case-by-case basis. For example, Victoria’s Secret was not just using the word pink on its clothing, it had also launched stores under that name.”

He emphasised that the decision covers the use of a logo which was deemed too similar to that of Thomas Pink, and there was evidence of consumer confusion between the two brands.

"This decision does not mean it’s open season for any fashion brand to trade mark and attempt to monopolise colour names. Thomas Pink’s ‘PINK’ trade mark is only registered in a specific logo form – not the word itself – and the court held that it was only valid due to having ‘acquired distinctiveness’ among consumers, having been used as a brand since the company opened its doors in 1984."

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