As one of the few consumers who purchases both Thomas Pink and Victoria's Secret PINK, this decision is of particuar interest to me. Thomas Pink got its panties in a wad over Victoria's Secret's launch of its PINK brand in the UK in 2012 and filed suit for trademark infringement in May of last year. The high-end London-based retailer claimed that Victoria's Secret's PINK brand would lead to customer confusion. Justice Colin Birss agreed and last week issued a ruling that Victoria's Secret's use of the word PINK on its goods infringed Thomas Pink's trademark. He noted that Victoria's Secret PINK clothing line could confuse consumers with its "sexy, mass-market appeal." The opinion stated that consumers might associate the proper and expensive clothing brand with undergarments, which would cause a "detriment to the repute" of the Thomas Pink brand.
Let's compare the brands:
Victoria's Secret argued that its brand was famous and that its customers were young women, not the older professionals who purchase dress shirts and ties from Thomas Pink. I mean, really...I highly doubt there are many others that purchase both high-priced dress shirts from Thomas Pink and PINK-branded loungewear from Victoria's Secret. (I won't lie...I do own pretty much every University of Louisville item in the PINK collection.) Is anyone really mistaking the startchy-collared brand with the line of collegiate-themed boyshorts and loungewear? Not likely, in my opinion. Those shopping for this:would not expect to find it in a store that sells this:
However, when thinking pink, Birss stated, "Consumers are likely to enter one of the claimant's shops looking for lingerie, and be surprised and disappointed when they find they have made a mistake." It is relevant to note that Thomas Pink does in fact sell skivvies. However, the traditional brand only sell men's boxers and boxer briefs, and they retail for approximately $50 versus the 5/$26.50 deal that VS usually runs on it's PINK branded undies.
"The defendant's business aims to have a sexy, mass market appeal. The link between the CTM and the defendant's PINK brand will cause consumers to associate the two. The claimant's trade mark will be associated with a mass market offering, reducing its luxurious reputation," wrote Judge Birss. Since this matter involved a CTM registration, this decision applies across all countries in the European Union. It seems as though VS will have to appeal; accepting the judgment of the High Court without appealing would mean that VS would have to entirely cease use of the PINK brand across Europe.
This isn't Judge Birss's only popular decision. You may be familiar with him from his recent ruling that Kraft's Cadbury had rights in its shade of dark purple. He's also the judge that found that Samsung tablets were not likely to be confused with Apple's iPads because they were "not as cool." Thomas Pink is obviously tickled pink over this ruling.
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