The Chancery Division of the Community Trade Mark Court recently decided [see end note 1] against Victoria's Secret UK Ltd. [hereinafter referred to as the 'defendant'] in an infringement action brought by Thomas Pink Ltd. [hereinafter referred to as the 'claimant'] in respect of its registered trade marks in European Union and a series of two marks in United Kingdom [hereinafter collectively referred to as the 'claimant's marks'].
The claimant is primarily engaged in sale of shirts, other items of clothing and accessories, all of which are marketed and sold extensively under the claimant's trademarks in UK and other European countries. The defendant, originating from USA, launched a sub-brand 'PINK' in respect of t-shirts and other clothing including lingerie aimed at the younger population. Upon the defendant's opening of 'PINK' stores in UK, the claimant alleged that such adoption and use of the mark 'PINK' amounts to infringement and passing off of its registered trademarks.
Distinctiveness of the claimant's trademarks
The defendant contended that the registrations in respect of the claimant's trademarks are invalid ab initio as the word PINK is descriptive and suggestive of the characteristic of the goods, thereby not capable of being distinctive. The court held that this issue had already been dealt with by the United Kingdom Intellectual Property Office (UKIPO) which granted registration to the claimant’s mark on the basis of evidence of acquired distinctiveness only. However, as the claimant, in the present suit, had contended that their trade marks were inherently distinctive, therefore, the court again looked into the issue and observed that even though the special form in which the word was presented (the rectangular box and the lines of the lettering being in pink colour to be precise) was unique to the claimant, it was not sufficient to be deemed inherently distinctive.
However, with respect to acquired distinctiveness, it re-affirmed the finding of the UKIPO that the same had acquired distinctiveness on account of evidence of widespread use for over three decades as proved from the testimonials of claimant’s staff witnesses.
The 'average consumer' and 'likelihood of confusion'
Several decisions on this issue were discussed as the court observed that "the likelihood of confusion is assessed from the perspective of the average consumer of the goods or services in question". It further stated that the average consumer in the present case would be "consumer of clothing". The claimant cited the following instances through which an average consumer would be likely to be confused between the claimant's mark and the defendant's use of the mark PINK:
- PINK being used on stores and retail shops by the defendant or reference to defendant's shop in a shop directory as "the PINK shop on level 4" without any reference to Victoria's Secret would confuse a person as to whether the shop belongs to the claimant or defendant;
- Use of the word PINK prominently in advertisements, shops with the words 'Victoria's Secret' written in font which generally goes unnoticed by viewers.
- Use of the sign PINK on items of clothing sold by the defendant or carry bags etc., when worn or used by a consumer would be assumed by others viewers as indicating the origin/association to the claimant since the viewer would not be in a position to check the neck label or tags attached to the goods in order to confirm the source.
Interestingly, the claimant also adduced evidence of instances when customers, confused by the deceptive use of the mark PINK by the defendant have entered the wrong shop with a view to exchange certain goods already purchased. Another line of defence adopted was that the word PINK was never used in isolation by the defendant and has always been accompanied by the defendant's much celebrated trading name 'Victoria's Secret' thereby eliminating any scope of public confusion. However, the court rejected the above argument as it accepted the contention made by the claimant that the words 'Victoria's Secret' and ‘PINK’ was never used in the same font and size (other than two specific instances). Rather, any reference to 'Victoria's Secret' was always in much lesser font which would easily escape the attention of the viewer thereby resulting in confusion amongst the public.
The court further observed that an average consumer is drawn by the signage and promotion, in particular the name of the store which is confusingly similar to another retailer's trade mark and not by the tags or neck label which can be accessed only upon entering the shop.
Infringement based on ‘detriment to distinctive repute’
Another interesting aspect of the decision is the emphasis laid on ‘reputation’ being a relevant factor in determining whether a case of infringement exists or not. The claimant argued that its mark had acquired distinctiveness and well established reputation for shirts and had established itself as a "luxury retailer known for quality and tradition and traditional values". It further argued that the defendant’s use of the impugned mark aimed at a sexy mass appeal would tarnish the claimant’s reputation. To this, the court accepted that the link between the claimant’s trademarks and the impugned mark would lead the customers to associate the two and would lead to detriment, if not tarnishment, to the reputation of the claimant.
The court further observed that the change in perception about the claimant’s mark by virtue of its association with the sexy connotation of the impugned mark would also result in “change in economic behavior of the claimant’s customers”. The court therefore concluded that the use of the impugned mark by the defendant would amount to dilution of the distinctiveness of the claimant's trademarks which had acquired through claimant's long and uninterrupted use of the same.
Territorial rights in trademarks
The judgment also touches on several other significant aspects of trademark protection and enforcement. For instance, the court accepted the submission of the defendant that by virtue of its extensive use and popularity of the impugned mark in United States, entering the European Union and UK market with the subject mark would be a natural extension of its business and therefore may not be deemed malafide. Therefore, the court re-emphasized the territoriality of the rights in trademarks. It also observed that the co-existence agreement between the claimant and the defendant in US was a covenant by the claimant not to sue in USA and therefore limited in territory without necessarily conferring a right to existence in EU and UK.
The court, in weighing the evidence of actual confusion, observed that though the evidence produced was not sufficient to establish the claimant's case, it is adequate to negate the defendant's claim that that there is no evidence of actual confusion in the UK or EU. It concluded that the defendant’s use of the word PINK both on its goods and as the name of its stores in European Union amounts to infringement of the claimant’s registered trade mark rights.
The judgment makes a very interesting read with respect to arguments made by the counsels for the claimant in establishing the distinctiveness of claimant's marks despite the word PINK being descriptive of the goods and services as well as the court's analysis of the actual evidence produced in determining the likelihood of confusion on the part of the public.
[The author is an Associate, IPR Practice, Lakshmikumaran & Sridharan, New Delhi]
- Thomas Pink Ltd v Victoria's Secret UK Ltd,  EWHC 2631 (Ch)