22 April 2014 5 min read

The high court has recently ruled that the us-based lingerie company, victoria’s secrets, were unlawfully using the mark ‘pink’ in relation to clothing products (specifically, a line of lingerie). The reason victoria’s secrets’ use of the mark ‘pink’ was held to be unlawful is due to the fact that london-based shirtmakers, thomas pink, already own a registered trademark which allows them exclusive use of the mark ‘pink’ in relation to clothing products in the european union.

What was the dispute about?

Thomas pink’s lawyers argued that by allowing victoria’s secret to keep using the ‘pink’ brand on their line of lingerie, which was being retailed in UK stores, there was an unacceptable risk that it would tarnish the thomas pink brand, which is generally associated with quality and tradition (rather than sex appeal!). As the legal owner of the eu-wide trademark ‘pink’ – in relation to clothing products – thomas pink were able to take the issue to the high court and seek a remedy which would prevent victoria’s secret from selling their ‘pink’ lingerie not just in the UK, but in the rest of the EU too. On the other side of the coin, victoria’s secret claimed that the victoria’s secret brand was a famous one and when customers encountered pink, it was always firmly in the context of that famous name, which ruled out any conceivable possibility of confusion with the luxury shirtmaker.

What was the result?

Mr justice birss handed down judgement, somewhat unsurprisingly, in favour of Thomas Pink (owned by luxury conglomerate, lvmh). In his judgement, he found victoria’s secret’s use of the ‘pink’ mark to be unlawful for two reasons. Firstly, it was possible that members of the public would confuse the two brands, which could create confusion in the marketplace – thomas pink’s legal team claimed that, on several occasions, members of the public who had purchased ‘pink’ lingerie had tried to return it, unsuccessfully, to the thomas pink store! Secondly, as a result of the brand confusion mentioned in the first reason, it is possible that thomas pink’s reputation may suffer some detriment by being associated with a lingerie chain. This is usually known as trademark dilution (or tarnishing – although mr justice birss was quick to point out that he would rather use the phrase ‘causing detriment to reputation’ than ‘tarnishment’ …a matter of semantics really).

What next for victoria’s secret?

Despite the argument being fairly one-sided, it’s quite possible that they will try to appeal the decision – after all, a legal appeal is far cheaper than a complete re-branding exercise or, worse still, shutting down the ‘pink’ brand within europe. Overall, then, it seems pretty likely that victoria’s secret will have to re-brand the ‘pink’ range of lingerie in the very near future if they wish to continue trading in europe.

Trademark tips for businesses

While rather unusual, this case does highlight a point which all business, large or small, should always consider: if you’ve developed a brand which you’re planning to launch it is imperative to ensure that the brand isn’t already trademarked in your class. Trademarks are issued in classes: one class for clothing, one for games, and one for condiments etc– the list goes on… so while there are probably a few mega-brands which have trademarks for every class, most trademarks cover only a few classes.

To give an example, if I’m looking to market a new type of concrete building block called apple, this would be fine as the apple trademark covers software, electronics, mobile devices and so on, but doesn’t extend to class 19 for blocks of concrete (this is probably a good juncture to point out that this is simply an example to note the distinction between classes!) so, provided that apple doesn’t have a trademark covering that class, and, provided that I wasn’t trying to convince buyers that my brand was associated with the apple consumer electronics brand (known as passing-off) I’d be free and clear to launch my range of concrete building blocks.

The key issue, really, is to check what trademarks already exist before you commit hundreds or thousands of pounds to marketing and advertising your product. The cost of not doing so can quickly exceed the cost of a detailed search and assessment of your name.

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Ryan Lisk

Ryan has helped a vast number of businesses protect and control their intellectual property as well as drafting and advising on consumer and commercial contracts.

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