Thomas Pink Ltd v Victoria's Secret UK Ltd

Hearing dates: 25th, 26th, 27th June, 1st July 2014

Approved Judgment

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

The claimant, Thomas Pink Limited, began trading in London in 1984. The core of its business is and has always been the sale of shirts which are worn by professional people, particularly men. Its flagship store is on Jermyn Street in London. Jermyn Street is famous for its shirt makers.

Since it began, Thomas Pink's business has grown and diversified and today a substantial part of its business involves selling goods other than shirts including other items of clothing and accessories. All of its goods are sold under and by reference to the names Thomas Pink and PINK. The word PINK is used in a distinctive font style. The picture below shows the front of the claimant's Jermyn Street shop and illustrates the way in which its shops are branded with the word PINK:

The claimant also uses the word PINK on its products and an example of the neck label in a shirt is shown below:

Examples of the claimant's packaging and some of the claimant's other goods (a jacket, underwear and hooded tops) are:

The claimant is the registered proprietor of two trade mark registrations:

i) Community Trade Mark Number 3,949,906 filed on 14 ^th July 2004 for goods in Classes 3, 14, 18, 25, 26 and retail services in Class 35:

ii) UK Trade Mark Number 2,565,078 filed on 22 ^nd November 2010 for goods in Classes 14, 18, 25 and retail services in Class 35. It is a series of two marks:

The lines making up the letters P, I, N and K are in a pink colour.

In the years between 2005 and 2012 the claimant's UK annual turnover was between about £23 million and £28 million. Its turnover in trade in the EU outside the UK fluctuated between about £2 million and £4 million. Today Thomas Pink has about 40 stores of which 35 are in the UK, two are in Ireland and two are in France. The claimant also trades in the USA.

The defendant is part of a group which sells the famous Victoria's Secret line of lingerie. The ultimate parent company is L Brands Inc. Victoria's Secret started in the USA in the 1970s and since then has grown very substantially. It is known worldwide.

In 2004 the Victoria's Secret group launched a sub-brand in the USA called PINK. PINK is a diversification from lingerie and related goods into clothing at large. It is aimed at the "college girl", that is females aged between about 18–25 years of age. The PINK range includes clothing such as t-shirts, sweatshirts and trousers as well as lingerie, nightwear and swimwear. The point of the PINK sub-brand is to have a younger entry level into the Victoria's Secret brand.

The precise extent to which Victoria's Secret in general and its PINK sub-brand in particular was known or offered for sale or sold in the UK after that date is in dispute and I will return to it below. What is not in dispute is that in 2012 Victoria's Secret began to implement a project to open retail outlets in Europe, starting in the UK. Its first store opened in 2012 on Bond Street in London. As well as shops branded VICTORIA'S SECRET, the defendant also opened stores branded PINK. Sometimes the PINK store and the VICTORIA'S SECRET store are very close or side by side and it is possible to walk from one to the other inside the premises. But in other cases the defendant opens free standing PINK stores which are distinct from its VICTORIA'S SECRET stores. The Bond Street shop front is marked VICTORIA'S SECRET but on a side street called Lancashire Court, there is a PINK shop front. Inside the premises the two shops are connected. In the Bluewater shopping centre the defendant has a freestanding PINK store and a freestanding VICTORIA'S SECRET store but they are not physically connected. The shop facia of one of the defendant's PINK stores looks like this:

The writing above the window consists of the words "Life is PINK is life". Underneath PINK are the words "VICTORIA'S SECRET" in small writing. The words are not visible in this reproduction but there is no doubt that they are there.

In its PINK stores Victoria's Secret sell a wide variety of casual clothing as well as fragrances, toiletries, bags and socks. Many of them present the word PINK alone in a prominent way on the garments. Examples include:

All of the defendant's garments carry the words VICTORIA'S SECRET somewhere. Sometimes the words VICTORIA'S SECRET are visible on the outside. In all cases the neck label or swing tag carries the words VICTORIA'S SECRET. Representative examples are these:

Other examples of the defendant's usage of the sign PINK are below. In these cases the words VICTORIA'S SECRET are present but in small writing and are often hard to see:

The claimant contends that the acts of the defendant amount to infringement of its registered trade marks and passing off. It contends that it has long standing trade in clothing in the UK and Europe under and by reference to the name PINK and that the trade has generated a goodwill and reputation which is attached to the claimant's business and trade marks and is identified in the minds of the public with PINK. It has valid registered rights in the form of the UK and Community trade marks for PINK devices.

It submits that prior to 2012 the defendant had no or no relevant retail presence in Europe but now the defendant has entered the territorial zone of the claimant's exclusivity and is using PINK as a primary sign on the garments and stores which are complained of in this case. Sometimes this is accompanied by the words VICTORIA'S SECRET but those words are not always present, and in many cases they are barely visible at all. Usually if they appear together the relative size of PINK and Victoria's Secret is such that PINK is many times larger. The claimant submits that it is obvious that the average consumer is likely to be confused and that this likelihood of confusion will arise in several ways:

i) First there will be confusion about whether a PINK shop is a shop of the claimant or the defendant. A consumer may see PINK in a shop directory or be referred orally to for example "the PINK shop on level 4", arrive at the wrong shop and leave disappointed. The claimant says that there is evidence showing examples of this kind of confusion and that it is not difficult to see why there are likely to be many others although as yet undetected;

ii) There will be confusion about whether the parties' retail shops are in some way linked to each other. For example consumers may seek to return the claimant's goods to the defendant's stores, ask to purchase the defendant's goods in claimant's stores or vice versa or simply be surprised to learn that the claimant does not sell lingerie. The claimant submits that this has already occurred and submits that it is likely to become the norm as the defendant becomes more well known in the UK market and in the same kinds of retail environments in close proximity to the claimant;

iii) A consumer may see a picture of the defendant's goods whether in advertising in store or online and assume a connection to exist with the claimant, perhaps because they fail to see the small VICTORIA'S SECRET text because it is only printed on the interior of the garment or on a swing tag, because it is missing entirely or because they believe the claimant is somehow involved with the defendant's PINK line. It will be a natural extension of the claimant's more formal wear to produce a secondary line of casual clothing. The claimant submits that in fact a significant part of the claimant's inventory and sales relate to casual clothing in any case; and

iv) Post-sale confusion is likely. The claimant submits there is a very serious risk that members of the public who see the defendant's garments being worn, its bags being carried and so on, will assume that they have some connection with the claimant.

So the claimant advances this claim for infringement under s10(2) of the 1994 Act / Article 9(1)(b) of the Community Trade Mark Regulation (No 207/2009) (the CTMR).

The claimant also advances a claim under s10(3)/ Art 9(1)(c). It submits that the defendant's encroachment into Europe poses an existential threat to the claimant's trade marks and good will. The defendant plans to open numerous stores throughout the UK, approximately 6 this year with more to follow and has its medium to long term eye on Europe, although no precise plans have been articulated. As the defendant expands the confusion will multiply and the claimant's marks will become diluted. It will reach the point where consumers no longer associate PINK with the claimant for clothing but instead associate it with the defendant. Indeed, the claimant submits, in some parts of the market this seems already to have happened once the conduct complained of commenced. The claimant also submits that there is a real risk of tarnishment. Thomas Pink is a luxury retailer known for quality and tradition and traditional values, whereas the defendant's brand message is sexy (because, as Mr Waters put it, "sexy sells"). The claimant refers to evidence which shows that Victoria's Secret has on some occasions been embroiled in controversy associated with its sales of lingerie.