Readers may already be aware that, at the end of July, Thomas Pink (the well-known clothing retailer) succeeded in its claim for registered trade mark infringement against Victoria's Secret.
For those that don't know, Thomas Pink asserted that the use of the stylised mark PINK, in connection with the sale and retailing of women's casual clothing and accessories by Victoria's Secret, infringed Thomas Pink's registered trade mark rights in respect of its logo marks for the word PINK.
There are a number of interesting points to take from the Court's decision. These include:
- The fact that Thomas Pink succeeded with its claim, without obtaining survey evidence indicating that there might be a likelihood of confusion on the part of the public and without calling at trial any real consumers who were actually confused between the marks in question. Instead, they led evidence from Thomas Pink employees, who recounted occasions where consumers had appeared to be confused. This is helpful to brand owners, who rarely find it easy to persuade members of the public to give evidence before a Court at trial.
- The fact that the two brands had co-existed peacefully in the US, without confusion arising, was irrelevant to the position in the UK.
- It was irrelevant that some of Victoria's Secrets goods were sold bearing not only the stylised mark PINK, but also the mark VICTORIA'S SECRET. Confusion could still arise.
- The fact that a likelihood of confusion can be found, even where the two parties target different segments of the clothing market.
- If Victoria's Secret were allowed to continue, then detriment was likely to be caused to the reputation of Thomas Pink's trade marks, which were associated (in particular) with the retailing of luxury shirts. The Thomas Pink trade marks could lose their reputation of luxury and become associated with mass market products, resulting in the loss of customers (as they would be less inclined to buy Thomas Pink goods). Further, detriment would be caused to the distinctive character of the Thomas Pink marks, as the word PINK would no longer serve as an exclusive designation of Thomas Pink's goods.
We expect that Victoria's Secret will appeal the decision and if it does we will report on the decision of the appeal. So, watch this space…