Author: Eddie Powell
This article is taken from the latest edition of Fladgate’s Fashion Update. Please email the marketing team on firstname.lastname@example.org to be added to the mailing list for future updates.
Victoria’s Secret, the famous lingerie brand, set up a sub-brand for its “college girl” clothing range and decided to call it “Pink”. It opened up Pink-branded retail units, sometimes as part of or connected to a VS store, but sometimes on a stand-alone basis. Much of the clothing sold as the sub-brand had “Pink”emblazoned across it with the VS name appearing in small type on swing tags and the retail outlets used Pink as the name of the store, again with the VS name appearing in smaller text.
When VS introduced the sub-brand to the UK, it was sued for trade mark infringement by Thomas Pink (TP), a retailer specialising in men’s shirts and other formal clothing.
Because the word “pink” can be used as a descriptive term for clothes, TP had not been able to register the plain word, but it had registered two stylised or device forms of its brand, and the court decided that TP had used those forms (or something very similar to them) enough to make them protectable as trade marks.
These registrations covered the generic description “clothing”.
VS claimed that their activities did not infringe because TP had only used their brand on a limited range of clothing, particularly shirts, and that their protection for the wide category of “clothing” should not be cut down to the goods on which TP’s mark had actually been used. TP put in a lot of evidence to show that they had used their brand on jackets, ties, underwear and some womenswear, including dresses and tops.
The court decided that:
VS also argued that the brand they used was “Victoria’s Secret Pink”: this was rejected by the court; unless and until the consumer was actually in a store examining swing tags, there was every likelihood that they would not realise that an item of “Pink” clothing was in fact a VS product.
Two things you should take away from this case:
Eddie Powell, Partner, Fladgate LLP (email@example.com)