Two fashion retailers have been at it again – this time over the trade mark PINK. In the recent case of Thomas Pink Limited v Victoria’s Secret UK Limited [2014]  EWHC 2631 (Ch) that was heard before the Chancery Division in the UK, the upmarket men’s fashion retailer Thomas Pink crossed swords with lingerie giant Victoria’s Secret.

Thomas Pink Limited is a well-known men’s clothing store which has been trading in London since 1984. The company is the proprietor of the following two trade mark registrations, which cover goods including clothing, and services including the retail of clothing and related goods:

i) Community Trade Mark no. 3,949,906 in classes 3, 14, 18, 25, 26 and 35

ii) UK Trade Mark no. 2,565,078 in classes 14, 18, 25 and 35 (which is a series of two marks)

Thomas Pink uses the above PINK marks, in this distinctive font, in relation to its retail stores and on the various items of clothing sold in its stores, including luxury men’s shirts, jackets and underwear.

In 2004, Victoria’s Secret launched a sub brand in the US, also called PINK. Whereas Thomas Pink’s PINK brand was aimed at the sophisticated, professional man, Victoria Secret’s PINK was aimed at the younger female market. Victoria Secret’s PINK range is used on an array of items, including t-shirts, sweatshirts, trousers, swimwear and, of course, lingerie. The PINK sub brand was extended to the UK in 2012, with various PINK stores opening either adjacent to or in close proximity to the mainstream Victoria’s Secret stores.

Thomas Pink instituted trade mark infringement proceedings against Victoria’s Secret, alleging that the use of the mark PINK by Victoria’s Secret in relation to clothing would give rise to a likelihood of confusion on the part of the average consumer, and that Victoria’s Secret’s use of the PINK mark takes unfair advantage of or is detrimental to the distinctive character or repute of Thomas Pink’s well-known mark PINK.

In turn, Victoria’s Secret sought to have Thomas Pink’s PINK registrations cancelled on inter alia the ground that they lacked a sufficient degree of distinctiveness, as PINK describes a characteristic of the goods, namely their colour.

It is a well-known principal of trade mark law that marks may only be registered (and remain so) if they are either inherently distinctive (e.g. not descriptive) or have acquired distinctiveness through use.

Thomas Pink argued that, because the word “PINK” was registered in a stylised font with a visual element, and not for the word mark PINK alone, it was sufficiently distinctive to be registrable. The court rejected Thomas Pink’s argument and agreed with Victoria’s Secret, holding that Thomas Pink’s PINK UK registration prima facie lacked the requisite degree of inherent distinctiveness to be registrable.

The next step was to assess whether Thomas Pink’s marks had acquired distinctiveness through use. Interestingly, although Thomas Pink had not made use of the identical UK mark as registered, but instead the word “PINK” in a stylised font against a pink background (as depicted in the CTM registration), the court held that it was the word element of the mark that formed the dominant and most memorable impression, and it is this element that consumers would be accustomed to.

The court held that through extensive and widespread use of the mark PINK by Thomas Pink for over 30 years in relation to clothing, the mark had acquired distinctiveness in order to avoid cancellation (other than in relation to certain goods and services for which they had not been used).

Having found that Thomas Pink’s registrations were indeed valid, the court ultimately held that Victoria’s Secret infringed Thomas Pink’s well-known registered PINK marks by use of the word mark PINK in relation to its stores and the goods sold in its stores.

This is not the first time that the issue of exclusivity in a colour has caused a row between fashion retailers. In 2012 in the US case of Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., well-known shoe-maker Christian Louboutin sought to interdict its competitor, Yves Saint Laurent, from infringing its registered trade mark for red soled high-fashion women’s shoes. Louboutin shoes are well-known for their red soles which contrast with the remainder of the shoe. In 2011, Yves Saint Laurent prepared to market a line of monochrome shoes, one of which was a red monochrome shoe with red soles, which resulted in the trade mark infringement proceedings.

As in the Thomas Pink Limited case, Yves Saint Laurent sought to have Louboutin’s trade mark cancelled on the basis of lack of distinctiveness, as it was merely ornamental. The court held that a single colour may serve as a trade mark, but that Louboutin was only entitled to prevent others from using red soles in conjunction with a contrasting colour for the rest of the shoe (for which they are well-known). Louboutin would accordingly not be entitled to prevent others from using red soles, where the rest of the shoe was also red.

Although the above case does differ from the Thomas Pink Limited case in that the latter case involved the word PINK, and not the actual colour, in both cases both the trade marks survived cancellation on the basis that they had acquired distinctiveness through extensive and widespread use.

The Thomas Pink Limited case illustrates that even marks with as low a degree of inherent distinctiveness as a colour in respect of clothing may acquire distinctiveness through extensive and widespread use. The exposure of the mark to consumers over many years was key to the survival of the registrations. The decision is a reminder to trade mark owners that use of a trade mark and exposure thereto is fundamental to obtaining, increasing and maintaining the distinctiveness of a mark.

Written by Dean Bellingan: Candidate Attorney – Trade Marks Department (Cape Town)
Approved by Jessica Axelson: Partner – Trade Marks Department (Cape Town), Adams & Adams