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England and Wales High Court (Chancery Division) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Thomas Pink Limited v Victoria's Secret UK Ltd  EWHC 2631 (Ch) (31 July 2014)
Cite as:  WLR(D) 368,  FSR 40,  EWHC 2631 (Ch)
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COMMUNITY TRADE MARK COURT
London, EC4A 1NL
B e f o r e :
| THOMAS PINK LIMITED
|- and -
|VICTORIA'S SECRET UK LIMITED
Emma Himsworth QC and Philip Roberts (instructed by Mishcon de Reya) for the Defendant
Hearing dates: 25th, 26th, 27th June, 1st July 2014
Crown Copyright ©
Mr Justice Birss:
i) Community Trade Mark Number 3,949,906 filed on 14th 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 22nd 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.
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.
The claim for revocation on the grounds of non-use
Non-use: the facts
i) jackets (but not suits)
The defendant submitted that the evidence only showed use on limited examples of jackets and no suits. I do not agree the jacket examples are particularly limited. They include tailored and quilted jackets (there is no reason to doubt the claimant's case that quilted jackets were sold in the relevant periods). The turnover is substantial. The claimant's accounting system includes turnover in a category for "mens suiting" but it shows no turnover before 2011 and so none in the earlier period.
The turnover figures are substantial. The defendant accepts use in relation to knitted cardigans and knitted jumpers. It is not clear what the real difference is between the categories accepted by the defendant and the category advanced by the claimant. Neither side focussed on this. There is clear evidence of use on cardigans, sweaters and jumpers. There is also an example of a "merino jersey top". I will accept the claimant's category.
iii) casualwear (including sweatshirts)
The turnover figures are substantial. The defendant submitted that all that had been shown was use on casual shirts or on things in other categories (such as knitwear, polo shirts etc.) and nothing more. I find clear evidence of use on casual shirts (e.g. rugby shirts). I also find genuine use on cashmere hooded cardigans and, in the second period, on a cashmere ladies casual lounge top. Although each could also be regarded as "knitwear", they are examples of casual garments which are not shirts. I accept the claimant's category.
The evidence is clear and the turnover figures are substantial.
The evidence is clear and the turnover figures are substantial.
Although the turnover figures are very small, the evidence is clear.
vii) tops (including ladies casual)
Although some of these items could also fall into other categories, the defendant accepted some evidence of use of the CTM here. The turnover figures are substantial.
The turnover figures show tangible albeit small sales in both periods.
ix) pocket squares and handkerchiefs
The turnover figures are substantial.
As in many cases the defendant accepts some evidence of use in the two periods (e.g. silk scarves here) but does not accept proof of use of the CTM on them. Bearing in mind Mr Heilbron's testimony about use of the CTM on swing tags, I find this category proven. The turnover figures are modest but tangible.
The turnover in both periods is substantial. There is clear evidence of use in some exhibits, e.g. a 2006 Autumn/Winter catalogue. The goods depicted are always boxer shorts. There is a text reference to "underwear" in a catalogue which presumably is also a reference to boxers.
xii) braces and cummerbunds
The turnover figures show small but tangible sales for both braces and cummerbunds although the examples in the exhibits are thin.
Belts and gloves
Beachwear and headgear
Is "clothing" a fair word to use?
Distinctiveness and the UK Trademark
"The following shall not be registered -
b) trade marks which are devoid of any distinctive character,
c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,
provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above, if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it."
Distinctiveness of the UK TM – the facts
Inherent qualities of the UK TM
Has the UK TM acquired distinctiveness?
i) the presentation of the word PINK in the UK TM is the same as in the presentation of the word PINK in the CTM save that in respect of the UK TM the letters are unfilled whereas in respect of the CTM the letters have been filled in with black ink; and
ii) the device used predominantly by the claimant e.g. on bags, swing tags, labels and other packaging, which presents the CTM on a pink background, in fact involves overlaying the CTM on top of the UK TM whereby the UK TM is applied as an outline known as a stroke to increase the legibility against that background. A colour illustration to demonstrate this point was presented on the claimant's closing skeleton. The first two rows show how a monochrome word is rendered with a black infill or with a pink stroke and the last row shows the combined result. The last row depicts the word PINK as it appears frequently in the claimant's swing tags, labels and packaging. The illustration is:
Infringement of the Trademarks
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
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.
Comparison between the goods and services
What sign has the defendant used?
i) Use of VICTORIA'S SECRET PINK in lock-up format;
ii) Use of PINK above the trademark VICTORIA'S SECRET;
iii) Use of PINK as an element in a slogan in various different configurations; and
iv) Use of PINK alone (in various scripts).
Context of the use
i) The proper context to consider swing tags and labels;
ii) The proper context to consider the signage on the defendant's PINK shops; and
iii) The Facebook presence.
Distinctiveness of registered marks
Evidence of actual confusion
Comparison between registered marks and the signs
Conclusions on likelihood of confusion s5(2)/ Art 9(1)(b)
Infringement under Art 9(1)(c) CTMR / section 10(3)
iii) Due cause
i) how the defendant's sign has been accepted by the public and what its reputation is;
ii) the degree of proximity between the relevant goods of each party; and
iii) the economic and commercial significance of the defendant's use complained of.
Detrimental to distinctive character or repute
s10(3) and the UK TM
The specification of the CTM as originally granted and as marked up by the claimant.
Description of CTM goods
Collar stays, collar stiffeners and collar supports; buttons; badges
The bringing together, for the benefit of others, of a
variety of goods including clothing,
Four kinds of presentation of the sign by the defendant
Annex 3 – specification of goods and services for UK Trade Mark 2 565 078
Cufflinks; tie pins and tie clips; studs, collar bones; jewellery, leather cufflink boxes, leather collarbone pouches, leather stud boxes.
Billfolds, credit card cases, wallets and umbrellas, leather wraps.
Men's and ladies' shirts, polo shirts, rollneck tops, ties, bowties, blazers, boxer shorts, socks, scarves, cravats, blouses, knitwear, dresses, wraps, nightwear, footwear,
cummerbunds, braces, beachwear, hats and gloves.
Retail services, mail order retail services, electronic shopping retail services connected with the sale of clothing, headgear, footwear, jewellery, watches, cufflinks, tie pins and tie clips, studs, goods of leather and imitation leather, umbrellas, fashion accessories, non-medicated toilet preparations, eyewear; the bringing together for the benefit of others of a variety of clothing, headgear, footwear, jewellery, watches, cufflinks, tie pins and tie clips, studs, goods of leather and imitation leather, umbrellas, fashion accessories, non-medicated toilet preparations, eyewear; enabling customers to conveniently view and purchase such goods; the provision of information and advice in relation to retail services; provision of advice and assistance in the selection of goods.
The table is confidential and has been removed from the public copy of the judgment.