Pink Clashes with PINK

Victoria's Secret London Bond Street storeBy Caroline Lau, Staff Writer, AMD LAW

British luxury shirt retailer Thomas Pink filed an infringement action against the UK branch of American lingerie retailer Victoria’s Secret with the Patents County Court in London back in May. Thomas Pink alleges that the Victoria’s Secret PINK line, designed to target the younger crowd of teens to twenty-somethings, confuses customers by marketing and selling products under the label “PINK”, which is also a name under the Thomas Pink brand.

What seems more confusing is the basis of the supposed infringement, as the two companies specialize in different kinds of apparel (Thomas Pink is known primarily for its men’s dress shirts, although the retailer sells clothes for women as well, while Victoria’s Secret is famous for its underwear, loungewear, and beauty products geared towards women). Furthermore, Victoria’s Secret PINK was established in 2001 in the US, and reportedly both companies have known and previously communicated about their common usage of the word “pink” since 2005. Victoria’s Secret was founded in 1977, and Thomas Pink in 1984.

Maybe the location of the first two Victoria’s Secret stand-alone stores in London that opened last year is perceived to be threatening by Thomas Pink to its business. According to a Thomas Pink spokesperson, “Thomas Pink is determined to protect the considerable investment that has been made into building the world’s luxury leading shirt brand.” The brand has an international presence with stores in many countries besides the UK, including France, the US, the UAE, Australia, South Africa and China.

Understandably, Victoria’s Secret is keen to protect itself on its home turf in light of the legal trouble abroad. The lingerie brand filed for a declaratory judgment lawsuit in an Ohio district court last week on July 24. Victoria’s Secret is seeking a declaration from the court stating that Victoria’s Secret PINK does not infringe on Thomas Pink; under federal law, such a declaration would have the force and effect of a final judgment or decree. In their filing, Victoria’s Secret note the disparity between the two companies’ product types—shirts versus bras, to be reductive—and maintain that there has been no evidence as yet of consumer confusion. Victoria’s Secret hopes a declaration will establish “the rights of the parties, allowing them to continue the peaceful coexistence that has been in place for many years.”

Damage control by way of a declaratory judgment lawsuit in the US is a swift move on the part of Victoria’s Secret. As for the infringement case in the UK, it’s still up in the air what the outcome may be. However, seeing as both brands are quite well vested in the fashion industry albeit on different sides, one being tailored to luxury and the other more commercial, it can be expected the two companies will firmly stand their respective grounds in the proceedings to come.

If you have an extravagant, extraordinary or exclusive product or service in need of legal protection, contact Luxury Law Firm.

Sources:

Vogue UK. (July 29, 2013). Victoria’s Secret vs Thomas Pink. Retrieved on July 30, 2013 from http://www.vogue.co.uk/news/2013/07/29/thomas-pink-files-infringement-case-against-victorias-secret-pink

The Huffington Post. (July 29, 2013). Thomas Pink, Victoria’s Secret Tussle Over ‘Pink’ In Legal Filings. Retrieved on July 30, 2013 from http://www.huffingtonpost.com/2013/07/29/thomas-pink-victorias-secret_n_3670433.html

Stock image: http://foter.com/f/photo/7889118074/2b0e123ed3/ Victoria’s Secret London New Bond Street