Thomas Pink Ltd v Victoria’s Secret UK Ltd PDF

Preview

Summary

This case relates to Intellectual property and colour marks....

Description

Page 1

Status:

Positive or Neutral Judicial Treatment

*963 Thomas Pink Ltd v Victoria’s Secret UK Ltd Chancery Division 31 July 2014

[2014] EWHC 2631 (Ch) [2014] F.S.R. 40 Birss J. 25–27 June, 1 and 31 July 2014 Clothing; Distinctiveness; Infringement; Non-use; Passing off; Registration; Retailers; Trade marks H1 Trade marks—UK and Community trade marks—Device marks—Series marks—PINK—Infringement—Validity—Non-use—Width of specification—“Clothing”—Clarity of specification—Whether mark devoid of distinctive character—Whether consisting exclusively of a descriptive indication—Acquired distinctiveness through use—Whether only use of the mark precisely as registered to be taken into account—Identification and characteristics of the average consumer—Likelihood of confusion—Context of the use of the sign complained of—Factors to be taken into account—Unfair advantage—Reputation—Whether only use of the mark precisely as registered to be taken into account—Whether the necessary link established—Detriment to distinctive character—Detriment to repute—Due cause—Passing off. H2 The claimant was a clothing retailer and had begun trading in 1984. Its core business was the sale of shirts for professional people, particularly for men, but over the years its business had diversified into other items of clothing and accessories. By 2012 it had an annual turnover in the United Kingdom of about £28 million and a flagship store in Jermyn Street, London. It also carried on business both elsewhere in the European Union and in the United States. All of its goods were sold under or by reference to the marks THOMAS PINK and PINK (used in a distinctive font style) and it was the registered proprietor of both a Community and a UK trade mark registered, inter alia, in classes 25 and 35 of the register. The registered marks were for device marks featuring the word PINK as show at [5(i)] and [5(ii)] of the judgment reported here. H3 The defendant was part of a worldwide business selling ladies lingerie. In 2004 it had launched a sub-brand in the United States under the name PINK aimed at a younger market, namely 18 to 25 year olds. In 2012 the defendant opened its first European store on Bond Street in London. Although that store carried the VICTORIA’S SECRET name on its Bond Street shop fascia, it connected to another store on a side street called Lancashire Court where the shop front bore signage essentially as shown at [9] of the judgment. Other stores followed, some displaying the VICTORIA’S SECRET brand name and others as shown at [9] of the judgment (the defendant’s “PINK stores”). In its PINK stores, the defendant sold a wide *964 variety of casual clothing and other goods such as fragrances, toiletries, bags and socks. Many of them prominently displayed the sign PINK in the manner shown at [163] of the judgment. H4 The defendant argued that the particular forms in which it had used the sign PINK could be divided into four categories as illustrated by the examples shown at Annex 2 to the judgment. These were (i) use of the words VICTORIA’S SECRET PINK in that order and with the same emphasis, the particular examples shown being on a brass plate at the Lancashire Court address and use on Facebook (referred to in the judgment as VICTORIA’S SECRET PINK in “lock up format”), (ii) use of PINK as shown on garment labels and swing tags, i.e. above the words VICTORIA’S SECRET, (iii) use of the word PINK as an element of a slogan, and (iv) use of the word PINK alone in various differing scripts. H5 The claimant contended that the defendant had infringed the UK registration under arts 5(1)(b) and (c) of Directive 2008/95/EC (“the Trade Marks Directive”), 2 and the CTM under arts 9(1)(b) and (c) of Council Regulation (EC) 207/2009 (“the CTM Regulation”) and that the acts complained of also amounted to passing off. In particular the claimant argued that although the use of the sign PINK by the defendant was sometimes accompanied by the words VICTORIA’S

Page 2

SECRET (particularly on garment labels and swing tags), those words were not always present and sometimes they were barely visible. Confusion was likely to arise in the following ways (i) there would be confusion as to whether a PINK shop was a shop of the defendant or the claimant e.g. when seen in a trade directory or referred to orally, (ii) there would be confusion as to whether the parties’ retail shops were linked in some way, e.g. consumer were likely to try to return the claimant’s goods to the defendant’s stores; (iii) a consumer might see a picture of the defendant’s goods in advertising, in store or online and assume a connection with the claimant; and (iv) there was a serious risk of post-sale confusion as members of the public seeing the defendant’s garments worn and its bags carried would assume that they had some connection with the claimant. Evidence was called, inter alia, from a number of employees at its stores to give evidence of what it alleged were instances of actual confusion on the part of members of the public. As to unfair advantage and detriment, the claimant contended that as the defendant’s use of the sign PINK expanded, so its registered marks would become diluted and/or cease to function as guarantees of origin. Tarnishment was also alleged on the basis that the claimant was a luxury brand associated with quality and traditional values, whereas the defendant had on occasions been embroiled in controversy associated with its sales of lingerie and that its brand message was sexy. H6 The defendant denied infringement and argued that although it too traded in clothing, it was at a different end of the market spectrum from the claimant and that the claimant’s registrations were not for the word PINK alone, the other elements of those device marks being important. Further, it argued that the mark under or by reference to which it sold its goods was VICTORIA’S SECRET PINK and that PINK had not been used by itself on any garment tags, labels, packaging or containers for such goods. The well-known VICTORIA’S SECRET brand name played a key role in the relevant context, that context including not only the way the sign was presented on the garments but also the wider context of the shops themselves which included many references to VICTORIA’S SECRET. That *965 context ruled out any possibility of confusion. The defendant also denied its use took unfair advantage of or was detrimental to the character or repute of the mark and argued that it had due cause for the use complained of in any event as this was merely an extension of the business it already conducted in the United States where the parties’ respective businesses were carried on side by side without confusion and that this was a perfectly legitimate thing for it to do. Reputation was admitted in relation to shirts only and in relation to the CTM only. In addition acquiescence under art.54 of the CTM Regulation and s.48 of the Trade Marks Act 1994 (“the 1994 Act”) was asserted. H7 The defendant also counterclaimed for revocation of the Community trade mark (“the CTM”) and invalidity of the UK registration. As to the CTM, it argued that the specification of the CTM in class 25 for “clothing, footwear, headgear” could not stand on the basis of the limited use which had been shown and because the term “clothing” was too vague in any event. That part of the specification of the CTM should be limited to “mens’ and ladies’ shirts; polo shirts, socks, blouses, knitted cardigans and knitted jumpers”. In class 35 the specification of the CTM should be limited to one which amounted to the bringing together of those particular goods for which the mark had actually been used in a retail shop or department store, by mail order or on the internet and nothing wider. The claimant accepted that it could not maintain a registration in respect of “headgear” and that there should be some adjustments to the scope of its registration in class 35 but sought to maintain its class 25 registration in respect of “clothing, footwear”. H8 As to the UK registration (which was registered for a narrower range of goods and services than the CTM—see Annex 3 to the judgment), the defendant argued that the claimant had not used the UK mark in the form in which it had been registered at all and that the UK registration was invalid as the word “pink” designated a characteristic of the goods and services for which it was registered (i.e. pink coloured goods) and the other elements of the device did not add any spark of distinctiveness. The claimant argued that neither s.3(1)(b) nor (c) were of any application as the registration was for a stylised form of the word PINK with a visual element. It also contended that the UK trade mark had acquired distinctive character through use and that it was entitled to rely upon its use of the CTM for that purpose. However it was the defendant’s case that, such use not having been of the UK mark as registered, it could not have resulted in the mark the subject of the UK registration having acquired distinctive character.

H9 Held , finding for the claimant,

Page 3

Non-use H10 (1) The claimant had put the CTM to genuine use in the Community in relation to jackets, knitwear/jumpers, casualwear (including sweatshirts), ties, dresses, skirts, tops (including ladies casual), pyjamas, pocket squares and handkerchiefs, scarves, boxers/underwear and braces and cummerbunds. Genuine use had also been shown in relation to T-shirts. Although the scale of such use was tiny, in no sense were such T-shirts promotional items. The claimant had put them on the market as something available to be bought from the claimant. Although small, genuine use had also been shown in relation to trousers, belts and gloves. ([65], [70], [71]) *966 Pedro Group Pte Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (T-38/13), 8 May 2014, unreported , GC referred to. Leno Merken BV v Hagelkruis Beheer BV (C-149/11) [2013] E.T.M.R. 16 , CJEU; European Drinks SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (T-495–497/12) [2014] E.T.M.R. 43 , GC and Silberquelle GmbH v Maselli-Strickmode GmbH (“WELLNESS”) (C-495/07) [2009] E.C.R. I-137; [2009] E.T.M.R. 28 , ECJ considered. H11 (2) The term “clothing” was a sufficiently clear and precise category to justify its employment in the specification of goods. ([74]) Chartered Institute of Patent Attorneys (C.I.P.A.) v Registrar of European Trade Marks (“IP TRANSLATOR”) (C-307/10) [2012] E.C.R. I-1000; [2013] R.P.C. 11 , CJEU distinguished. H12 (3) The range of goods in relation to which the claimant had put the CTM to genuine use, both in terms of the range of kinds of items and range of styles (formal to casual), justified a registration in Class 25 based on the description “clothing”. A narrower classification based on individual items would not be fair. However, although the sales of wellington boots by the claimant amounted to genuine use of the CTM as they were being sold as part of normal commerce and they were not a promotional items, this did not justify a registration for footwear in general. ([77], [80]) Reckitt Benckiser (España), SL v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (“ALADIN”) (T-126/03) [2005] E.C.R. II-2861; [2006] E.T.M.R. 50 , Ch D; Pan World Brands v Tripp Ltd (“EXTREME”) [2008] R.P.C. 2 , App Person and Maier v ASOS Plc [2013] EWHC 2831 (Ch); [2014] F.S.R. 16 , Ch referred to. H13 (4) As to the other classes, the specification in class 26 needed to be amended to substitute a reference to “studs” for “buttons”, genuine use was established in class 18 in relation to “bill folds, credit card cases, containers, wallets and wraps made of leather and imitations of leather not included in other classes” and “umbrellas, parasols and walking sticks”, class 14 should be limited to “cufflinks” and class 35 should be amended in the terms proposed by the claimant save that it should not refer to “jewellery” (in respect of which genuine use had not been made out by the claimant). ([81]–[85])

Distinctiveness and the UK registration H14 (5) Even if a mark did not consist “exclusively” of objectionable content and as such fell outside of the scope of s.3(1)(c) of the 1994 Act , it would still be caught by s.3(1)(b) . ([89]) Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2012] EWHC 307 (Ch); [2014] F.S.R. 20 , Ch D followed. H15 (6) To support acquired distinctiveness a proprietor was entitled to rely at least on use of the mark in a form which differed from the mark as registered in elements which did not alter the distinctive character of the registered mark. There was no good reason why European law should limit the use which could be relied upon for this purpose to use of the mark exactly as registered. Proprietors did not always and consistently use a mark in precisely the form as registered. If use with minor variations was permitted to be taken into account in order to avoid revocation for non-use, it would be unfair to the proprietor to ignore the same use of a mark from *967 the point of view of acquiring distinctiveness merely because it was not absolutely identical to the registered mark. The way the trade mark system ensured that the register did not have marks on it which were not actually in use was through the non-use provisions. There was no good reason to take a more restrictive approach than that in relation to acquired distinctiveness. ([94], [95],

Page 4

[97]) Société des produits Nestlé SA v Mars UK Ltd (C-353/03) [2005] E.C.R. I-6135; [2006] F.S.R. 2 , ECJ and Colloseum Holding AG v Levi Strauss & Co (C-12/12) [2013] E.T.M.R. 34 , CJEU considered. H16 (7) The UK registered trade mark was not simply the word PINK in special form, it was the word PINK in a rectangle. The rectangular box was not merely a means for presenting the colour of the background as the claimant had argued. The true interpretation of the series to which the UK registration related was the there had to be a box but the background colour in the box, which was the colour outside the letters and inside the outlines, could be any colour. ([103], [106]) Comic Enterprises Ltd v Twentieth Century Fox Film Corp (“GLEE”) [2014] EWHC 185 (Ch); [2014] F.S.R. 35 , Ch D distinguished. H17 (8) Although it was not disputed that the letters forming the word PINK were presented in a form which was unique to the claimant and had been designed especially for it, the UK trade mark as registered did not prima facie satisfy either ss.3(1)(b) or 3(1)(c) and even if the word “exclusively” could be regarded as enough to avoid s.3(1)(b) , it did not prima facie avoid s.3(1)(b) . Accordingly for it to remain on the register it needed to have acquired distinctiveness through use. ([108]) H18 (9) The way PINK had commonly been used by the claimant (i.e. without the lines of the letters P, I, N and K in a pink colour) was not use of a mark identical to the UK trade mark. However, the differences between the format of PINK in the CTM and in the UK trade mark were extremely minor and would not be regarded as distinctively significant by the average consumer. Accordingly the claimant’s use of the CTM was capable, at least in principle, of leading to the acquisition of distinctive character by the UK trade mark. ([110], [112]) H19 (10) Given the very extensive use of the CTM over a lengthy period and the other evidence of distinctiveness such as evidence from the claimant’s staff witnesses, the UK trade mark had acquired distinctive character in relation to the goods for which it was registered and accordingly could take the benefit of the provision to s.3(1) . ([113], [114])

Infringement under article 5(1)(b)/article 9(1)(b) H20 (11) The average consumer in the present case was a consumer of clothing and (i) represented a spectrum of consumers from different backgrounds and who shopped in different ways; (ii) would exercise a moderate degree of attention to branding but would not scrutinise the fine print of swing tags and labels; (iii) represented consumers at all levels of the market i.e. both low end garments and luxury clothing; (iv) represented both male and female consumers; (v) would shop in different contexts, sometimes buying for a specific occasion or simply browsing; (vi) was likely to be drawn into retail stores based on the 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; and (vii) had come to expect that a shop front represented a single store and that two shop fronts, even if adjacent, were not without some other indication assumed to be linked to each other. ([118]) *968 Jack Wills v House of Fraser [2014] EWHC 110 (Ch); [2014] F.S.R. 39 and Interflora Inc v Marks and Spencer Plc (“Interflora I”) [2012] EWCA Civ 1501; [2013] F.S.R. 21 , CA referred to. H21 (12) All of the goods and services complained of were either identical to or similar to goods and/or services falling within the scope of the claimant’s registrations. ([121]–[127]) H22 (13) There had been no use of VICTORIA’S SECRET PINK in lock up format by the defendant or its affiliates in the European Union. The Lancashire Court brass plate was a format which placed emphasis on PINK and drew a distinction between VICTORIA’S SECRET and PINK and the defendant’s Facebook presence had not been targeted at the United Kingdom or European Union. ([131]–[136]) L’Oréal SA v eBay International AG (C-324/09) [2011] E.C.R. I-6011; [2011] R.P.C. 27; [2011] E.T.M.R. 52 , CJEU and Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch); [2013] F.S.R. 35 , Ch D referred to. H23 (14) Use of the sign PINK when emblazoned prominently on one of the defendant’s

Page 5

garments was meant to be seen by persons other than the wearer when the garment was worn after purchase. A person looking at someone wearing such a garment would see the sign PINK as having some origin significance and would not see any neck label or swing tag or other indication of where the goods had been bought. This post-sale context was a realistic and fair context in which to consider the effect of the use of the sign complained of. The same applied where what the garment bore the word PINK with a slogan of the kind shown in box 3 of Annex 2 and to other goods (such as body lotion) where the sign PINK was presented so as to be seen after purchase. ([142]–[145]) Specsavers International Healthcare Ltd v ASDA Stores Ltd [2012] EWCA Civ 24; [2012] F.S.R. 19 , CA referred to H24 (15) The swing tags and garment labels should be considered in the context of the defendant’s stores as it was in a shop that the average consumer would look at them. ([147]) H25 (16) If there was a likelihood that the average consumer would be drawn inside a retailer’s premises as a result of shop signage on the street which was confusingly similar to another retailer’s trade mark, then that was a relevant likelihood of confusion from the point of view of the retail services in class 35 and it would remain relevant even if the consumer was later disabused of their mistake once they entered the premises. This was not initial interest confusion. A trade mark for retail services did not operate at the point of sale of individual goods but at the point the consumer chose to enter the shop. ([148]) Och-Ziff Management Europe Ltd v Och Capital LLP [2010] EWHC 2599 (Ch); [2011] F.S.R. 11 , Ch D distinguished. H26 (17) When considering the proper context of a shop sign it was fair to consider what was visible in the shop windows. However as this would vary from day to day and care had to be taken in placing too much weight on it. It was not fair to take into account the details of the internal elements of a shop which were not clearly visible from the street. ([149]) H27 (18) The defendant’s Facebook presence involved a distinct context of its own. The interior of the defendant’s retail premises had nothing to do with how the average consumer would perceive postings on Facebook. ([150]) H28 (19) The level of distinctiveness of both of the registered marks was at a normal level. Neither of them enjoyed an enhanced level o...