Wednesday 13th August 2014

A recent High Court judgment demonstrates the need to keep your trade marks under review for both ongoing use and, where logos are concerned, form of use in order to avoid losing the right to enforce them in the event of infringement.

Clothing company Thomas Pink Limited claimed that the branding of Victoria’s Secret’s PINK line on garments and store fronts was similar enough to create confusion in the mind of the average consumer: a point they illustrated with the example of consumers attempting to return Victoria’s Secret goods to Thomas Pink stores.

Both logos consisted of the word PINK in capitals and it is fair to say that, to the average consumer, there was a striking similarity. Victoria’s Secret’s response was that they had not infringed because Thomas Pink’s trade mark was invalid. They argued that because the word “pink” was purely descriptive, and because Thomas Pink’s use of its logo differed slightly from the version which it had registered, Thomas Pink did not have any right to prevent Victoria’s Secret’s use of its own, similar logo.

The judge agreed that Thomas Pink’s mark would usually be invalid for being descriptive, but agreed that the logo had acquired distinctiveness through extensive use over many years, and that it therefore was a valid trade mark.

So, even though Thomas Pink did not have exclusive use of the word ”pink” in relation to clothing, it did have a right to challenge logos with a confusing visual similarity to its own.

Furthermore, even though the “Thomas Pink” logo was used in a slightly different way to how it was registered, the Court felt that the difference was not great enough to amount to anything.  The fact that Thomas Pink had built up genuine distinctiveness in the trade mark through long term use probably counted for a lot.

Gavin Llewellyn
Stone King LLP