Luxury fashion items and trade mark infringement

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We reported earlier in the summer that the fashion designer Karen Millen had succeeded in an action for infringement of unregistered Community design right against the retailer, Dunnes. Intellectual property disputes involving retailers and fashion are all too common; another one to have troubled the courts in recent months is Thomas Pink Ltd v Victoria’s Secret UK Ltd [1].

Thomas Pink Limited, which has been trading by reference to the name Thomas Pink and PINK in London since 1984, brought a trade mark infringement claim regarding the use of the trade mark PINK, which it had registered as a Community and UK trade mark. Victoria’s Secret, which began trading in the USA in the 1970s and has more recently opened a number of retail outlets in Europe, sells a range of products including fragrances, toiletries, bags and clothing on which appears the work PINK.

In his judgment, Mr Justice Birss held that consumers in Europe might come to associate the claimant, a manufacturer of traditional luxury shirts, with the “sexy” mass-market goods and underwear sold by the defendant, to the detriment of the repute of its mark. In the judge’s words, consumers “will not see the CTM in the same way as before. The claimant’s trade mark will be associated with a mass market offering, reducing its luxurious reputation. There is every risk that this will lead consumers not to buy products from the claimant when they otherwise would have done”.

Mr Justice Birss also explained there would be a detriment to the distinctive character of the claimant’s mark. In time, the defendant’s use of the word PINK not in a descriptive sense but as a badge of origin would cause the claimant’s trade mark to lose its ability to act as a designation of the claimant as the origin of its goods.

The judgment contains a number of important lessons on accurately portraying the use of the marks, the balanced approach that the court should take in assessing whether the specification for which the mark is registered is fair, and how a mark might acquire distinctiveness even if the mark used is not identical to the mark registered. The judgment is also particularly interesting in that it shows us that confusion between trade marks may arise even where the brands in issue are targeting different sectors of the market, and even where the brands have co-existed for years in another jurisdiction (i.e. USA) without confusion.

[1] [2014] EWHC 2631 (Ch)