Who's Pink - Thomas Pink or Victoria's Secret?

In Thomas Pink Limited v Victoria's Secret UK Ltd [2014] EWHC 2631 (Ch) (31 July 2014) Mr Justice Birss had to resolve a dispute between two well known retailers. The claimant was Thomas Pink which had started life as a specialist shirt maker in Jeremyn Street. It is now part of the LVMH Group the interests of which range from champagne to fashion.

The defendant was Victoria's Secret UK which is best known for its bras and knickers particularly in the US where it began.

Both retailers are diversifying their businesses.  Thomas Pink's website has a section for "Women" after "New Collection", "Men", "Shirts", "Ties" and "Accessories" while Victoria's Secret is moving into women's clothing generally.

The Dispute
The battle arose over the right to use the word "Pink" as a brand. According to Wikipedia the claimant was named after Thomas Pink, an 18th-century tailor, who made the hunting coats worn by Masters of Foxhounds, whippers-in and huntsmen which are still called hunting pink even though they are actually scarlet in colour. The defendant has launched a new brand in the USA called Pink aimed principally at young women of college age which it wished to bring to Europe. To promote the PINK brand Victoria's Secret had opened a number of shops in the UK under that sign. In his judgment Mr Justice Birss exhibited photographs of one of the claimant's shops (top left) and one of the defendant's to the right.

Thomas Pink's Trade Marks
The claimant had registered the following Community and British trade marks:
  • EU 3,949,906 for a range of goods in classes 3, 14, 18, 25, 26 and 35; and 
  • UK 2,565,078 for a range of goods in classes 14, 18, 25 and 36.
It claimed sales under the sign PINK of between £23 and £28 million in the UK (and between £2 and £4 million in the rest of the UK) every year between 2005 and 2012 through its 35 outlets in the UK, its 2 in France and its further 2 in the Republic of Ireland.

The Issues
The claimant sued for infringement of its Community trade mark ("CTM") under art 9 (1) (b) and (c) of the Community Trade Mark Regulation and s.10 (2) and (3) of the Trade Marks Act 1994 and passing off. The defendant counterclaimed for the revocation of the CTM in relation to some of the specified goods on grounds of non-use and invalidation of the British mark on the ground that it was not distinctive.

The Counterclaim
The judge found that both the Community and British trade marks were valid. He held that the CTM had been put to genuine use for most of the goods for which it had been registered.  Though he decided that the British trade mark was not inherently distinctive at the time of registration he held that it had acquired distinctiveness through use. 

Trade Mark Infringement
Mr Justice Birss found that the defendant had infringed the claimant's Community and British trade marks under both art 9 (1) (b) and (c) and s.10 (2) and (3).

Art 9 (1) (b) and s.10 (2)
In determining whether the defendant had infringed the CTM under art 9 (1) (b) and the British mark under 10 (2) the judge considered the following factors:

"i) Average consumer
ii) Comparison between the goods or services
iii) What sign has the defendant used?
iv) Context of the use
v) Distinctiveness of the registered marks
vi) Evidence of actual confusion?
vii) Comparison between the registered marks and the signs
viii) Conclusions on likelihood of confusion."

At paragraph [117] he said:

"The likelihood of confusion is assessed from the perspective of the average consumer of the goods or services in question. The average consumer is always deemed to be reasonably well informed, observant and circumspect although his or her level of attention may vary depending upon the nature of the goods or services in question and how they are acquired. The average consumer is not a single person but represents a distribution of consumers; see the review of the law in this area by Arnold J in Jack Wills v House of Fraser [2014] EWHC 110 (Ch), paragraphs 63-65. Referring to Interflora v Marks & Spencer [2012] EWCA 1501 (Civ) the defendant emphasised that the average consumer test is normative and it falls to be applied objectively by the judge from the perspective of the relevant construct."

In this case the average consumer was a consumer of clothing and his lordship held that such a consumer has the following characteristics:

"i) The average consumer represents a spectrum of consumers who are from different backgrounds and shop in different ways; some will be tourists, others will be locals to an area, some will shop for themselves, and others will be buying a gift for someone else
.ii) Although many consumers of clothing are very brand conscious that does not apply to all consumers. In my judgment the average consumer will exercise a moderate degree of attention to branding but will not scrutinise the fine print of swing tags and labels.
iii) Consumers of clothing vary enormously in their tastes and their means. At times in the argument the defendant appeared to be advancing a case which divided the average consumer into a consumer of low end clothing (who might buy the defendant's products) and a consumer of luxury clothing (who might buy the claimant's products). The extent to which this may be relevant to passing off is something which would only be relevant to that claim, but in relation to the question of registered trademark infringement for a mark registered for clothing it is not relevant. The average consumer represents consumers at all levels of the market.
iv) The average consumer represents both male and female consumers. In addition both sexes will buy products for themselves and for members of the opposite sex as presents.
v) Consumers of clothing shop in different contexts, sometimes people set out to buy a particular thing or to buy something for a particular occasion, but in other circumstances shopping is an end in itself and the consumer is simply browsing. As the claimant submitted, this is evidenced in large shopping malls such as Westfield or Bluewater or at a famous department store where shoppers might go and "have a wander" or perhaps drop into a shop which catches their eye.
vi) Where the average consumer shops in retail stores, he or she is likely to be drawn inside based on material visible from the exterior of the store including signage and promotions and in particular the name of the store and anything in the windows.
vii) Consumers come to expect that a shop front for example on a street or in a shopping centre represents a single store. Two shop fronts, even if adjacent, are not without some other indication going to be assumed to be linked to each other."

He then proceeded with the comparison of registered marks and signs and specified goods and goods for which the signs were used from the perspective of the average consumer and concluded that the use of the sign PINK as a label on clothing, at the point of sale, in promotional literature and on shop front fascias gave rise to a likelihood of confusion.

Art 9 (1) (c) and s.10 (3)
As for the claim under art 9 (1) (c) and s.10 (3) the judge considered the following factors:

"i) Reputation
ii) Link
iii) Due cause
iv) Detriment"

Since the defendant admitted that the claimant had a reputation at least in shirts. a link had been established for the claim under art 9 (1) (b) and s.10 (2) and detriment flowed from the link, the battle focused on due cause. The defendant argued it had used PINK in the USA for many years in essentially the same way it now sought to do in the UK and EU. It had due cause to use PINK in that way here because that activity was simply a natural extension of its substantial activities in the USA. It was not seeking to take advantage of Thomas Pink's rights. The goods it sold are distinct from the goods sold by the claimant. Although there had been a complaint by Thomas Pink in the USA some years ago there had now been co-existence there for a number of years and no evidence of confusion in the USA exists. Its US websites and catalogues have also made consumers here aware both of VICTORIA'S SECRET itself and PINK in particular.

Mr Justice Birss was not impressed. He said at paragraph [198]:

"The corporate group of which the defendant is a part has used PINK in the USA for many years in essentially the same way it now seeks to do in the UK and EU. From the defendant's point of view the activity complained of in this case is a natural extension of its substantial activities in the USA. It is not deliberately seeking to take advantage of Thomas Pink's reputation but the defendant did not pause to consider what the claimant's European or UK trade mark rights actually were before it launched here. It simply went ahead."

The Judge concluded "that the premise on which the defendant decided to enter the European market was adopted in good faith but it was wrong. A reasonable business knowing what the defendant knows now would not continue to act in this way."

Passing off
As the claimant had succeeded on trade mark infringement the judge did not consider that he needed to consider the case in passing off and decided not to do so.

As we have come to expect from Sir Colin since he was first appointed to the circuit bench some 4 years ago there is a lot of meat in his judgments and I have chosen to chew on some of the choicest bits. To my mind his formulation of the factors to be considered when making a similar signs and similar goods comparison has much to commend it and is an improvement on the formulation based exclusively on CJEU cases that are relied upon by hearing officers in our Trade Marks Registry. I found his identification of the average consumer particularly helpful. I also found his approach to the question of whether the defendant had due cause helpful. But this is a very long judgment and there is much in the transcript that I did not discuss for reasons of space which merits reading.

Should anyone wish to discuss this fascinating case or trade marks in general they are welcome to call me on 020 7404 5252 during normal office hours. They can also message me through my contact form, tweet me, write on my wall or message me through G+ and Linkedin at any other time.


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