A SHOCKING PINK AFFAIR - “Global Pink War” continues

July 2014

A SHOCKING PINK AFFAIR - “Global Pink War” continues as Thomas Pink and Victoria’s Secret reunite in UK court room.

One is best-known for its luxury dress shirts, the other for women’s lingerie and nightwear. Both have co-existed peacefully for more than a decade in the United States but things stopped being so rosy when VS launched its flagship store in London, Thomas Pink’s main market, in 2012. A claim for trade mark infringement and passing off was subsequently filed by Thomas Pink.

The issue of whether there is a likelihood of confusion between the marks is likely to dominate. Thomas Pink has elected to call evidence of actual confusion from employees of the company who allege to have witnessed incidents of confusion by customers. How much probative value these will be given is yet to be seen but it will be interesting to see whether the Court takes the view that such confusion should be tolerated in light of the concurrent use of the marks. Thomas Pink not only faces the hurdle of establishing a likelihood of confusion but also of adducing evidence that use of PINK by VS in the UK adversely affects the function of its trade marks. One does not necessarily lead to the other.

In the meantime, the cross-border disputes continue. In a retaliative attempt to protect its interests in the States, VS filed a motion for a declaratory judgment that its use of VICTORIA’S SECRET PINK and PINK trade marks there do not infringe the rights of Thomas Pink. Thomas Pink filed a motion to dismiss on the basis that the UK litigation is insufficient to create a “reasonable apprehension” of a suit in the U.S. VS seeks a similar declaration in Canada. Trade mark oppositions continue in various countries. Further information from colleagues in these territories are welcome.

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