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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
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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,

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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],
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[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
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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 of distinctiveness. ([151]) *969
H29 (20) Overall the claimant’s evidence of actual confusion was not of sufficient weight to lend
any significant positive support to the claimant’s case, but it did play an important negative role in
the action. Its existence was sufficient to prevent the defendant from credibly contending that
there was no evidence of actual confusion in the United Kingdom or the European Union and the
defendant’s own evidence did not rule out the existence of customer confusion in the United
Kingdom. Although it could be inferred that there was no significant confusion taking place in the
United States, the court was not satisfied that trading conditions were sufficiently similar to the
United Kingdom or European Union for this to be a matter on which much weight could be
placed. ([160]–[162])
H30 (21) The use of PINK in the form shown at [163] of the judgment was very similar to the
prominent element of both the CTM and the UK registration as it involved the words itself and the
outlined typeface enhanced the similarity between the mark and the signs. Even without the
outlined typeface (e.g. as shown in box 4 of Annex 2), the sign was still very similar to the
prominent element of the registered marks. Use in slogans such as “life is PINK is life” would
reduce that similarity somewhat but not substantially as using a brand in slogans was something
the consumer would be familiar with and the claimant had done this too. ([164]–[166])
H31 (22) Where PINK was in outlined typeface above a much smaller VICTORIA’S SECRET in a
simpler typeface, such as on the defendant’s swing tags and labels, the average consumer would
perceive this as the presentation of two distinct signs. ([167])
H32 (23) The average consumer would perceive the signage at the defendant’s PINK stores as
use of the sign PINK in a slogan. The sign VICTORIA’S SECRET, although part of the context of
that use, was not prominent. ([168])
H33 (24) Both where PINK was emblazoned on the defendant’s clothing and where PINK in
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slogan and device format was used on items of clothing, the goods in issue were identical, the
signs were very similar and nothing in the relevant context would reduce a likelihood of
confusion. Even when used on goods other than clothing, they were similar to the registered
marks and the same conclusion followed. Further, the defendant’s shop fascia also gave rise to a
likelihood of confusion. The reference to VICTORIA’S SECRET was too small to play a material
role and the outline format of PINK which the defendant had used enhanced the similarity. The
fact that some of its stores were beside a VICTORIA’S SECRET store or linked inside was
irrelevant. Accordingly all of the defendant’s activity using signs of the kinds shown in boxes 3
and 4 of Annex 2 gave rise to a likelihood of confusion under art.9(1)(b) of the CTM Regulation.
([169]–[173])
H34 (25) Although the defendant’s swing tags and labels presented the name VICTORIA’S
SECRET in small writing underneath the outlined format of the sign PINK which reduced the
likelihood of confusion, this was not enough on its own to avoid infringement. The sign PINK
played an independent distinctive role in this context. However, the decisive factor was the retail
context inside the shops. Even inside a free-standing PINK store, there was sufficient emphasis
on VICTORIA’S SECRET to counteract any likelihood of confusion arising from such swing
tickets or labels as shown in box 2 of Annex 2. ([175]–[178])
Medion AG v Thomson Multimedia Sales Germany & Austria GmbH (C-120/04) [2005] E.C.R.
I-8551; [2006] E.T.M.R. 13 , ECJ referred to. *970
H35 (26) The use of PINK emblazoned on the front of goods along with the words VICTORIA’S
SECRET such as the body lotion product shown at [13] of the judgment infringed under
art.9(1)(b) of the CTM Regulation. The words VICTORIA’S SECRET were truly tiny. In a post
sale context PINK played an independent distinctive role and the words VICTORIA’S SECRET
did not negative the likelihood of confusion. ([179])
H36 (27) The brass plate at the defendant’s store at Lancashire Court shown in box 1 of Annex 2
also infringed under art.9(1)(b) . The sign was being used to refer to identical retail services and
the sign PINK on the plate had an independent distinctive role. ([180])
H37 (28) As to Facebook, even if the defendant’s Facebook presence had been targeted at the
United Kingdom or the European Union, the use of VICTORIA’S SECRET PINK in lock up format
would not have given rise to a likelihood of confusion and would not have infringed under this
head. The context of this use was very different. The site was not selling goods but was part of a
general promotional activity and would be seen as such by the average consumer. In that context
PINK would not be regarded as playing an independent distinctive role. ([181])
H38 (29) There was no material distinction to be made between the CTM and the UK trade mark
when assessing infringement under s.10(2) of the Trade Marks Act 1994. ([182])

Infringement under article 5(2)/article 9(1)(c)

H39 (30) The CTM had a major reputation relating to luxury shirts and a sufficient reputation to
satisfy art.9(1)(c) for casual tops and knitwear for men and women and also for ties, boxer shorts
and socks. ([186])
H40 (31) When assessing whether the necessary link was established for purposes of art.9(1)(c)
in a case such as the present, it was necessary to consider the goods or services actually sold or
provided by the defendant and that section of the public aware of the claimant’s reputation. There
could be no such link if the section of the public aware of the claimant’s mark would simply never
encounter the goods or services actually sold or provided by the defendant. ([188]–[190])
Intel Corporation Inc v CPM United Kingdom Ltd (C-257/07) [2008] E.C.R. I-8823; [2009] R.P.C.
15 , ECJ and Jack Wills v House of Fraser [2014] EWHC 110 (Ch); [2014] F.S.R. 39 referred to.
H41 (32) Average consumers familiar with the claimant’s reputation would encounter the
defendant’s swing tags and labels and would enter the defendant’s premises with a view to
buying the defendant’s goods complained of in this action ([192])
H42 (33) The relevant average consumer would perceive a link between the CTM and the
defendant’s sign PINK as used on the swing tags and labels of all of the defendant’s goods, even
when they appeared in the context of the defendant’s stores. That consumer would appreciate
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from the context that they related in some way to VICTORIA’S SECRET. However what they
would see was a sign very similar to and reminiscent of the claimant’s sign. Although it did not
include the full name THOMAS PINK nor the Jermyn Street address, the key element was the
word PINK itself and it was even presented in a format which was reminiscent of the claimant’s
PINK outlined format (although that was not critical). Further, the defendant’s goods included
some goods the same as the kinds of goods for which *971 the CTM had a reputation (e.g.
casual tops and socks) and the rest were similar or very similar. ([193], [194])
H43 (34) As to the use of VICTORIA’S SECRET PINK in lock up format on Facebook, no such
link was established. PINK was not presented independently of VICTORIA’S SECRET either
grammatically or by using differences in format. ([195])
H44 (35) The defendant did not have due cause to act in a manner which would otherwise
infringe the claimant’s trade mark rights under art.9(1)(c) or s.10(3) of the 1994 Act . There were
a number of differences between this case and Leidseplein3 : (i) the fact that act the defendant
relied upon took place outside the Community was fatal to this contention; (ii) the start of its use
of PINK did not predate the CTM anywhere; (iii) co-existence in the United Kingdom and a lack of
confusion evidence did not take the defendant very far as the legal context and the parties’
respective legal rights were not the same there; (iv) some of the defendant’s acts infringed under
art.9(1)(b) and those acts were an integral part of the same overall activity by the defendant; (v)
the goods and services offered by the defendant were and always had been in close proximity to
the claimant’s goods; and (vi) the economic and commercial significance of the defendant’s
activity was substantial. Further, although the premise on which the defendant had decided to
enter the European market was adopted in good faith, it was wrong. A reasonable business
knowing what the defendant knew now would not continue to act in that way. ([201]–[203])
Interflora Inc v Marks and Spencer Plc (C-323/09) [2012] E.T.M.R. 1; [2012] F.S.R. 3 , CJEU
referred to.
Leidseplein Beheer BV v Red Bull GmbH (C-65/12) [2014] E.T.M.R. 24 , CJEU distinguished.
H45 (36) The link to the CTM caused by the defendant’s use of PINK would cause detriment to
the repute of the claimant’s mark. It was bound to cause a change in economic behavior of the
claimant’s customers as they would not see the CTM in the same way as before. It would be
associated with a mass market offering, reducing its luxurious reputation and here was every risk
that this would lead consumers not to buy products from the claimant when they otherwise would
have done. ([205])
H46 (37) Such use would also inevitably cause detriment to the distinctive character of the
claimant’s mark. Over time, if not stopped, it was bound to cause the claimant’s clothing trade
mark to begin to lose its ability at acts as a designation of the claimant as the origin of its goods.
The defendant was backed by a huge business and was in a position to saturate the market with
its conflicting origin message in a very short space of time. There was a real risk that this would
lead to a change in economic behaviour. For example consumers were likely to enter one of the
claimant’s shops looking for lingerie and be surprised and disappointed when they found they
had made a mistake. ([206])
H47 (38) Infringement under s.9(1)(c) based on the CTM was accordingly made out. ([208])
Environmental Manufacturing LLP v Office for Harmonisation in the Internal Market (Trade Marks
and Designs) (OHIM) (WOLF HEAD) (C-383/12 P), 14 November 2013, unreported , CJEU
considered. *972
H48 (39) No different conclusion was reached under s.10(3). The fact that the claimant had not
used the mark precisely as registered did not preclude a case under this head. The proprietor
was entitled to rely upon use in a form which did not alter the distinctive character of the mark to
generate the relevant reputation. Further, although the comparison between the UK registration
and PINK as used on the defendant’s swing tags and labels differed very slightly from that
carried out when considering the CTM, was not identical, those details did not matter for this
analysis. ([209]–[210])

Acquiescence
H49 (40) The defence of acquiescence could not succeed. The only usage which could be said
 Page 8

to be use of VICTORIA’S SECRET PINK was on Facebook or in relation to the brass plate at
Lancashire Court, but neither had continued for five years. Further, the claimant had only learned
of the defendant’s use in the United Kingdom and European Union in 2012. ([211]–[214])

Passing off
H50 (41) In the light of the court’s conclusions on infringement it was unnecessary to consider
the passing off case. If the claimant’s trade mark case had not succeeded it was hard to see how
its passing off case could have done. ([215])

H51 Cases referred to:

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

Colloseum Holding AG v Levi Strauss & Co (C-12/12) [2013] E.T.M.R. 34 , CJEU

Comic Enterprises Ltd v Twentieth Century Fox Film Corp (“GLEE”) [2014] EWHC 185 (Ch);
[2014] F.S.R. 35 , Ch D

Environmental Manufacturing LLP v Office for Harmonisation in the Internal Market (Trade
Marks and Designs) (OHIM) (WOLF HEAD) (C-383/12 P), 14 November 2013, unreported ,
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

Intel Corporation Inc v CPM United Kingdom Ltd (C-257/07) [2008] E.C.R. I-8823; [2009]
R.P.C. 15 , ECJ

Interflora Inc v Marks and Spencer Plc (C-323/09) [2012] E.T.M.R. 1; [2012] F.S.R. 3 , CJEU

Interflora Inc v Marks and Spencer Plc (“Interflora I”) [2012] EWCA Civ 1501; [2013] F.S.R. 21
, CA

Jack Wills v House of Fraser [2014] EWHC 110 (Ch); [2014] F.S.R. 39 , Ch D

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

Leidseplein Beheer BV v Red Bull GmbH (C-65/12) [2014] E.T.M.R. 24 , CJEU

Leno Merken BV v Hagelkruis Beheer BV (C-149/11) [2013] E.T.M.R. 16 , CJEU

Maier v ASOS Plc [2013] EWHC 2831 (Ch); [2014] F.S.R. 16 , Ch D

Medion AG v Thomson Multimedia Sales Germany & Austria GmbH (C-120/04) [2005] E.C.R.
I-8551; [2006] E.T.M.R. 13 , ECJ
*973
 Page 9

Och-Ziff Management Europe Ltd v Och Capital LLP [2010] EWHC 2599 (Ch); [2011] F.S.R.
11 , Ch D

Oberbank AG v Deutscher Sparkassen- und Giroverband eV (C-217/13 & C-218/13) [2014]

E.T.M.R. 56 , CJEU

Pan World Brands v Tripp Ltd (“EXTREME”) [2008] R.P.C. 2 , App Person

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

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 , CFI

Silberquelle GmbH v Maselli-Strickmode GmbH (“WELLNESS”) (C-495/07) [2009] E.C.R.

I-137; [2009] E.T.M.R. 28 , ECJ

Société des produits Nestlé SA v Mars UK Ltd (C-353/03) [2005] E.C.R. I-6135; [2006] F.S.R.
2 , ECJ

Sony Ericsson Mobile Communications AB’s Trade Mark Application, BL O-138/06, 25 May
2006, unreported , App. Person

Specsavers International Healthcare Ltd v ASDA Stores Ltd [2012] EWCA Civ 24; [2012]
F.S.R. 19 , CA

Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2012] EWHC 307 (Ch); [2014]
F.S.R. 20 , Ch D

Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch); [2013] F.S.R. 35 , Ch D

Total Ltd v YouView TV Ltd [2014] EWHC 1963 (Ch) , Ch D

YouView TV Ltd v Total Ltd [2012] EWHC 3158 (Ch); [2013] E.C.C. 17

H52 Legislation referred to:

Trade Marks Act 1994, ss.3(1)(b) , 3(1)(c) , 3(1) proviso , 10(2) , 10(3) , 41 , 46(2) , 48 , 100

Directive 2008/95/EC (“the Trade Marks Directive”), arts 10(1)(b) and (c)

Council Regulation (EC) 207/2009 (“the CTM Regulation”), recital 10 and arts 7(1)(b) , 7(1)(c)
, 9(1)(b) , 9(1)(c) , 15(1)(a) , 51(1)(a) , 51(2) , 54
 Page 10

H53 Representation

Charlotte May QC and Jaani Riordan , instructed by Bristows LLP , solicitors, appeared for the
claimant.

Emma Himsworth QC and Philip Roberts , instructed by Mishcon de Reya , solicitors,

appeared for the defendant.

Judgment

BIRSS J:
1 The claimant, Thomas Pink Ltd, began trading in London in 1984. The core of its business is
and has always been the sale of shirts which are worn by professional people, particularly men.
Its flagship store is on Jermyn Street in London. Jermyn Street is famous for its shirt makers.
2 Since it began, Thomas Pink’s business has grown and diversified and today a substantial part
of its business involves selling goods other than shirts including other items of clothing and
accessories. All of its goods are sold under and by reference to the names Thomas Pink and
PINK. The word PINK is used in a *974 distinctive font style. The picture below shows the front
of the claimant’s Jermyn Street shop and illustrates the way in which its shops are branded with
the word PINK:

3 The claimant also uses the word PINK on its products and an example of the neck label in a
shirt is shown below:
 Page 11

4 Examples of the claimant’s packaging and some of the claimant’s other goods (a jacket,
underwear and hooded tops) are: *975
 Page 12

5 The claimant is the registered proprietor of two trade mark registrations:

i) Community Trade Mark Number 3,949,906 filed on 14 July 2004 for goods in Classes 3,
14, 18, 25, 26 and retail services in Class 35:

ii) UK Trade Mark Number 2,565,078 filed on 22 November 2010 for goods in Classes 14,
18, 25 and retail services in Class 35. It is a series of two marks:
 Page 13

The lines making up the letters P, I, N and K are in a pink colour.

6 In the years between 2005–2012 the claimant’s UK annual turnover was between about £23
million and £28 million. Its turnover in trade in the European Union outside the United Kingdom
fluctuated between about £2 million and £4 million. Today Thomas Pink has about 40 stores of
which 35 are in the United Kingdom, two are in Ireland and two are in France. The claimant also
trades in the United States.
7 The defendant is part of a group which sells the famous Victoria’s Secret line of lingerie. The
ultimate parent company is L Brands Inc. Victoria’s Secret started in the United States in the
1970s and since then has grown very substantially. It is known worldwide.
8 In 2004 the Victoria’s Secret group launched a sub-brand in the United States called PINK.
PINK is a diversification from lingerie and related goods into clothing *976 at large. It is aimed at
the “college girl”, that is females aged between about 18–25 years of age. The PINK range
includes clothing such as T-shirts, sweatshirts and trousers as well as lingerie, nightwear and
swimwear. The point of the PINK sub-brand is to have a younger entry level into the Victoria’s
Secret brand.
9 The precise extent to which Victoria’s Secret in general and its PINK sub-brand in particular
was known or offered for sale or sold in the United Kingdom after that date is in dispute and I will
return to it below. What is not in dispute is that in 2012 Victoria’s Secret began to implement a
project to open retail outlets in Europe, starting in the United Kingdom. Its first store opened in
2012 on Bond Street in London. As well as shops branded VICTORIA’S SECRET, the defendant
also opened stores branded PINK. Sometimes the PINK store and the VICTORIA’S SECRET
store are very close or side by side and it is possible to walk from one to the other inside the
premises. But in other cases the defendant opens free-standing PINK stores which are distinct
from its VICTORIA’S SECRET stores. The Bond Street shop front is marked VICTORIA’S
SECRET but on a side street called Lancashire Court, there is a PINK shop front. Inside the
premises the two shops are connected. In the Bluewater shopping centre the defendant has a
free-standing PINK store and a free-standing VICTORIA’S SECRET store but they are not
physically connected. The shop fascia of one of the defendant’s PINK stores looks like this:
 Page 14

10 The writing above the window consists of the words “Life is PINK is life”. Underneath PINK are
the words “VICTORIA’S SECRET” in small writing. The words are not visible in this reproduction
but there is no doubt that they are there.
11 In its PINK stores Victoria’s Secret sell a wide variety of casual clothing as well as fragrances,
toiletries, bags and socks. Many of them present the word PINK alone in a prominent way on the
garments. Examples include: *977

12 All of the defendant’s garments carry the words VICTORIA’S SECRET somewhere.
Sometimes the words VICTORIA’S SECRET are visible on the outside. In all cases the neck
label or swing tag carries the words VICTORIA’S SECRET. Representative examples are these:
 Page 15

13 Other examples of the defendant’s usage of the sign PINK are below. In these cases the
words VICTORIA’S SECRET are present but in small writing and are often hard to see:

14 The claimant contends that the acts of the defendant amount to infringement of its registered
trade marks and passing off. It contends that it has long standing trade in clothing in the United
Kingdom and Europe under and by reference to the name PINK and that the trade has generated
a goodwill and reputation which is attached to the claimant’s business and trade marks and is
identified in the minds of the public with PINK. It has valid registered rights in the form of the
United Kingdom and Community trade marks for PINK devices.
15 It submits that prior to 2012 the defendant had no or no relevant retail presence in Europe but
now the defendant has entered the territorial zone of the claimant’s exclusivity and is using PINK
as a primary sign on the garments and stores which are complained of in this case. Sometimes
this is accompanied by the words *978 VICTORIA’S SECRET but those words are not always
present, and in many cases they are barely visible at all. Usually if they appear together the
relative size of PINK and Victoria’s Secret is such that PINK is many times larger. The claimant
submits that it is obvious that the average consumer is likely to be confused and that this
likelihood of confusion will arise in several ways:

i) First there will be confusion about whether a PINK shop is a shop of the claimant or the
defendant. A consumer may see PINK in a shop directory or be referred orally to for
 Page 16

example “the PINK shop on level 4”, arrive at the wrong shop and leave disappointed. The
claimant says that there is evidence showing examples of this kind of confusion and that it
is not difficult to see why there are likely to be many others although as yet undetected.

ii) There will be confusion about whether the parties’ retail shops are in some way linked to
each other. For example consumers may seek to return the claimant’s goods to the
defendant’s stores, ask to purchase the defendant’s goods in claimant’s stores or vice versa
or simply be surprised to learn that the claimant does not sell lingerie. The claimant submits
that this has already occurred and submits that it is likely to become the norm as the
defendant becomes more well known in the UK market and in the same kinds of retail
environments in close proximity to the claimant.

iii) A consumer may see a picture of the defendant’s goods whether in advertising in store
or online and assume a connection to exist with the claimant, perhaps because they fail to
see the small VICTORIA’S SECRET text because it is only printed on the interior of the
garment or on a swing tag, because it is missing entirely or because they believe the
claimant is somehow involved with the defendant’s PINK line. It will be a natural extension
of the claimant’s more formal wear to produce a secondary line of casual clothing. The
claimant submits that in fact a significant part of the claimant’s inventory and sales relate to
casual clothing in any case.

iv) Post-sale confusion is likely. The claimant submits there is a very serious risk that
members of the public who see the defendant’s garments being worn, its bags being carried
and so on, will assume that they have some connection with the claimant.

16 So the claimant advances this claim for infringement under s.10(2) of the 1994 Act / art.9(1)(b)
of the Community Trade Mark Regulation (207/2009) (the CTMR).
17 The claimant also advances a claim under s.10(3) / art.9(1)(c) . It submits that the defendant’s
encroachment into Europe poses an existential threat to the claimant’s trade marks and good
will. The defendant plans to open numerous stores throughout the United Kingdom,
approximately six this year with more to follow and has its medium to long term eye on Europe,
although no precise plans have been articulated. As the defendant expands the confusion will
multiply and the claimant’s marks will become diluted. It will reach the point where consumers no
longer associate PINK with the claimant for clothing but instead associate it with the defendant.
Indeed, the claimant submits, in some parts of the market this seems already to have happened
once the conduct complained of commenced. The claimant also submits that there is a real risk
of tarnishment. Thomas Pink is a luxury retailer known for quality and tradition and traditional
values, whereas the defendant’s brand message is sexy (because, as Mr Waters put it, “sexy
sells”). The claimant *979 refers to evidence which shows that Victoria’s Secret has on some
occasions been embroiled in controversy associated with its sales of lingerie.
18 The claimant also submits that its passing off case is made out for similar reasons. Its good
will in the PINK name and sign has been established by continuous UK trade over a 30-year
period in a broad range of men’s and women’s clothing and accessories. When the defendant
markets its goods under its PINK sign consumers will be likely to assume a connection or
association with the claimant. A consumer who has for decades been buying the claimant’s
shirts, casual wear and accessories and who sees another garment labelled PINK will be likely to
believe they are connected in trade. The fact the garment is not a collared shirt or a particularly
high quality garment will not change this. Equally the fact that the defendant’s PINK and the
claimant’s PINK devices do not look exactly the same or are represented in different retail
contexts does not matter since members of the public are accustomed to seeing a more edgy or
modern typeface being applied to a clothing retailer’s informal clothing line. The risk of deception
is especially acute if the exposure to the misrepresentation is fleeting or occurs after sale and the
resulting damage is obvious.
19 The defendant does not accept these allegations. It submits that it is a legitimate retailer and
the suggestion in the claimant’s submissions that there is something inappropriate or improper
 Page 17

about its trading is wrong. The fact that occasionally the defendant’s sale of lingerie attracts
some controversy is inevitable in a business of that kind. The defendant accepts that the two
parties’ businesses are both related to clothing in general terms but they are at opposite ends of
the spectrum. The claimant is a specialist Jermyn Street shirt maker and has deliberately and
consciously cultivated its reputation as such. Its customers are older professional people. The
defendant’s PINK sub-brand is aimed at an entirely different segment of the younger female
clothing market. The brand Victoria’s Secret is a famous one and when consumers encounter
PINK they always encounter it firmly in the context of the famous name VICTORIA’S SECRET.
This rules out any conceivable possibility of confusion.
20 The defendant also submits that the claimant’s legal rights have to be examined with care.
Both its CTM and UK TM are device marks. They are not registrations for the word PINK alone.
The prominent words in the CTM are not PINK alone but THOMAS PINK and the other elements
including the address and the special form in which the words THOMAS PINK appear are
important. The UK TM consists of a series of two device marks, the word PINK appearing in a
special form which is not the same as the form in which it appears in the CTM. The lettering is in
the pink colour and the word is written in a box with either a black or a white background.
21 The defendant argues that the specification of goods and services for which the CTM is
registered is far too broad; in fact the claimant has not used the CTM for many goods and
services covered by the registration. To reflect the extent to which the claimant has actually used
its trade mark, the specification in Class 25 for “clothing, footwear, headgear” should be restricted
to “Mens’ and ladies’ shirts; polo shirts, socks, blouses, knitted cardigans and knitted jumpers”.
The registration in Classes 3 and 18 should be revoked entirely, Class 14 should be limited to
“cufflinks”, Class 26 to “Collar stays, collar stiffeners and collar supports”, and Class 35 should be
limited to a specification which amounts to bringing together *980 the goods mentioned so far in
a retail shop or department store, by mail order or on the internet.
22 In the important Class 25, the defendant submits that the claimant cannot justify a registration
for “clothing” both because the evidence of its use does not justify such a registration and
because the term itself is too vague (citing the CJEU in 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 ). It submits that I should prefer the reasoning of Sales J. in Total Ltd v
YouView TV Ltd [2014] EWHC 1963 (Ch) to that of Arnold J. in Stichting BDO v BDO Unibank
Inc [2013] EWHC 418 (Ch); [2013] F.S.R. 35 on the question of lack of precision in a
specification after grant.
23 As for the UK TM, the defendant argues that the mark is invalid under s.3(1)(b) and 3(1)(c) of
the 1994 Act because the word pink designates a characteristic of the goods and services (i.e.
pink coloured goods) and the other elements like the border do not add any spark of
distinctiveness. It observes that the UKIPO also took the view that the mark was not inherently
distinctive but registered it on evidence of acquired distinctiveness pursuant to the proviso.
Before me the claimant argues that the mark is inherently distinctive but also relies on evidence
that the mark has acquired a distinctive character through use.
24 This dispute raises a point of principle. The defendant submits that when one looks carefully
at the claimant’s evidence and the UK TM, in fact the claimant has never used a mark in exactly
the form in which it is registered. The defendant argues that as a matter of law a mark can only
acquire distinctive character as a result of use of the mark in a form identical to the form as
registered. The use may involve using the mark in a composite with other elements but the
presentation of the mark as used must be in the form as registered. Although s.46(2) allows a
proprietor to rely on use in a form differing in elements which do not alter the distinctive character
of the mark when considering revocation for non-use, no corresponding provision exists in
relation to the proviso in s.3 and the proprietor, when trying to establish distinctiveness acquired
through use, cannot rely on use of a mark which is not identical in form to the registered mark
even it is use in a form differing in elements which do not alter the distinctive character of the
mark.
25 The claimant does not accept this. First it submits that when properly understood the UK TM
and the PINK element of the CTM are in fact the same mark and denies that the UK TM has not
been used. Moreover the claimant also argues that the defendant’s point of law is wrong; the
claimant can rely on use of the mark in other forms which do not alter the distinctive character.
So the UK TM is validly on the register.
 Page 18

26 The defendant denies infringement and also argues that once the correct scope of the
claimant’s trade mark rights is determined, the case for infringement is even weaker. An
important dispute is about the context in which the sign complained of appears ( Specsavers
International Healthcare Ltd v ASDA Stores Ltd [2012] EWCA Civ 24; [2012] F.S.R. 19 ). The
defendant contends that VICTORIA’S SECRET plays a key role in the relevant context. That
context includes not only the way the sign is presented on the garments but also the wider
context of the shops themselves which include many references to VICTORIA’S SECRET.
27 A further important element in this case is that in its defence (e.g. [22] onwards) the defendant
contends that the sign under and by reference to which the goods and services complained of
are and have always been sold is “VICTORIA’S *981 SECRET PINK”. Paragraph [26] of the
defence asserts that at no time has the word PINK by itself appeared on the garment tags,
labels, packaging and containers for the goods and (at [28]) the defendant’s branding guidelines
confirm this.
28 The claimant denies this. It contends that the defendant has never used the sign
“VICTORIA’S SECRET PINK” in the United Kingdom in a lock up format, in other words with all
three words in the same font and size, spaced equally and in general given equal prominence. A
question of fact arises about what exactly the defendant has done. In any case the claimant
contends this three word sign infringes as well.
29 On the claim for extended protection ( s.10(3) / art.9(1)(c) ) the defendant admits that the
claimant has a reputation in relation to shirts but submits it is only in relation to shirts. It denies
that its use takes unfair advantage of or is detrimental to the distinctive character or repute of the
claimant’s marks. The defendant also contends that all its activity has been carried out with due
cause, since the defendant has used the mark PINK in the United States for many years and is
simply expanding its operations into Europe unchanged, a natural and legitimate thing for a
business to do.
30 The defendant also takes a point on acquiescence (under art.54 CTMR / s.48 of the 1994 Act
).
31 In relation to passing off, the defendant accepts that the claimant has a goodwill and
reputation in the United Kingdom but submits it is confined more narrowly than the claimant
contends, essentially to shirts. It submits there is no risk of deception and no damage.

The witnesses

32 The claimant’s principal witness was Jonathan Heilbron. He is the President and Chief
Executive Officer of the claimant. He explained the claimant’s trading history, how it used and
portrayed itself as PINK and how the brand had developed. He gave evidence of its product
range and the use of the colour pink by the claimant as well. He dealt with the likelihood of
confusion between the claimant’s and the defendant’s marks and goods and addressed
examples of actual confusion which the claimant relied on. He also addressed potential harm to
the claimant from the defendant’s trade, some details of the point of sale and the claimant’s
knowledge of the defendant’s brand. Finally his evidence addressed the counterclaims for
revocation for non-use and invalidation for lack of distinctiveness.
33 Mr Heilbron gave his evidence fairly, trying to assist the court. The defendant submitted that
on occasions Mr Heilbron acted as an advocate for the claimant’s case. That is not a fair
criticism. It is true that Mr Heilbron feels passionately about this dispute. This passion came over
in his evidence. But in my judgment, at all times he was seeking to assist the court and was not
embellishing or overstating his position.
34 The claimant also called its solicitor, Mr Paul Walsh. He addressed a point on disclosure and
certain other matters. He gave his evidence fairly and properly.
35 The claimant’s other witnesses were all members of staff who had encountered what the
claimant characterised as evidence of confusion and were explaining what had happened. I will
deal with those separately below.
36 The defendant’s primary witness was Mr Martin Waters. He is the President of International
Business at L Brands Inc. He was hired by L Brands to grow its *982 international business in
 Page 19

particular into Canada, the United Kingdom and Europe and the Middle East. His responsibility in
relation to Canada changed but is not relevant. He has ultimate responsibility for the commercial
expansion of the international business and the physical and commercial position of the
business. He described the defendant’s business and explained how it had moved into the
United Kingdom and Europe and how it traded. He explained that he did not believe that PINK
was distinctive of Thomas Pink or that there was any risk of an association between Thomas
Pink and his company’s activity.
37 The defendant’s next witness was Mr Matthew Sohl, he was an Associate Vice-President of
Design and Graphics and dealt with the style, look and feel of the defendant’s brand. He also
reviewed and explained the defendant’s branding guidelines.
38 The final witness for the defendant was Mr Daniel Cook. He is a customer experience
manager at the New Bond Street shop. He explained what happened in the shop and his
experiences there and elsewhere. He also explained that as far as he was concerned there was
an absence of any evidence of actual confusion between the parties.
39 A particular point arose in relation to all of the defendant’s evidence. The witness statements
of all three witnesses referred to the defendant’s brand as VICTORIA’S SECRET PINK. Reading
the witness statements one might get the idea that the only sign used by the defendant was
VICTORIA’S SECRET PINK. During their cross-examination all three also consistently used the
term VICTORIA’S SECRET PINK to refer to the defendant’s branding and products.
40 The claimant criticised this, submitting that “all three witnesses stuck doggedly to the party
line, repeatedly using the phrase VICTORIA’S SECRET PINK in oral evidence even though that
sign is not used by the defendant at all and is obviously not the normal way in which the
defendant’s sign would be read, perceived or articulated by the average consumer”.
41 There is some force in this criticism since it is perfectly apparent from the evidence as a whole
that the manner in which the signs appear on the defendant’s goods frequently involves
presenting the word PINK alone without the words VICTORIA’S SECRET at all and frequently,
when the words PINK and VICTORIA’S SECRET appear together, presenting the word PINK first
and in much larger and more prominent lettering than VICTORIA’S SECRET.
42 In this respect the witness statements of all three of the defendant’s witnesses are open to
criticism since they appear to suggest that VICTORIA’S SECRET PINK in lock up format is the
manner in which the defendant presents itself and its goods to the public in the United Kingdom,
when that is plainly not right. However having heard the individual witnesses it is apparent that
the L Brands organisation as a whole including the defendant internally regards the brand or
sub-brand in issue in this case as VICTORIA’S SECRET PINK. That is how they see it and they
regard the various ways in which this sub-brand is presented to the outside world as all
manifestations of that essential idea. Accordingly I can understand how all three witnesses came
to give the evidence they did. They were not setting out to mislead because from their point of
view the brand or sub-brand in question in this case is VICTORIA’S SECRET PINK. However I
will not rely on their manner of characterising the defendant’s method of trading. It is perfectly
obvious the defendant does not confine itself to presenting the words VICTORIA’S *983
SECRET PINK in a lockup format to the outside world. Examples of other modes of presentation
are given above.
43 The impact of this conclusion means that Mr Sohl’s evidence was of little utility. In addition to
his direct testimony Mr Sohl had exhibited extracts from the defendant’s branding guidelines
which were intended to support his evidence. The exhibited extracts on their own presented a
materially incomplete picture of the defendant’s manner of trading. This was exposed in the cross
examination. I doubt Mr Sohl sought to do that himself. He said his exhibits had been prepared
by the legal team and not by him. I will not rely on Mr Sohl’s evidence.
44 This conclusion also means that I am not satisfied I can rely on the views of Mr Waters or Mr
Cook about the perceptions of European consumers insofar as they are adverse to the claimant’s
case.
45 The claimant criticised Mr Waters’ evidence as being that of an advocate for the defendant’s
case. In my judgment, he was no more of an advocate for his company’s position than Mr
Heilbron was for his company. Both gentlemen feel passionately about this dispute and gave
their evidence in that way.
 Page 20

The claim for revocation on the grounds of non-use

46 By art.51(1)(a) of the CTMR the rights of a proprietor of the Community trade mark shall be
revoked if within a continuous period of five years the trade mark has not been put into genuine
use in the Community in relation to the goods or services in respect of which it is registered and
there are no proper reasons for non-use. Where the grounds of revocation exist in respect of only
some of the goods or services, the rights of the proprietor shall be declared to be revoked only in
respect of those goods or services ( art.51(2) ).
47 The fundamental principles applicable to a decision in relation to non-use were not in dispute.
The burden of proving use is on the proprietor of the mark. The rationale for the requirement that
a mark must be the subject of genuine use in order to be protected under EU law is in recital 10
of the CTMR . The Community Register is not “a strategic and static depository granting an
inactive proprietor illegal monopoly for an unlimited period” but rather “must faithfully reflect what
companies actually use on the market to distinguish their goods and services in economic life” (
Pedro Group Pte Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs)
(OHIM) (T-38/13), 8 May 2014, unreported , at [20]). A mark is put to genuine use when it is used
in accordance with its essential function and for the purpose of maintaining or creating market
share within the EC for the goods or services covered by it ( Leno Merken BV v Hagelkruis
Beheer BV (C-149/11) [2013] E.T.M.R. 16 ). When a court assesses whether the conditions in
art.51 are met all relevant facts and circumstances are to be taken into account including the
characteristics of the mark concerned, the nature of the goods or services protected by the trade
mark and the territorial extent and scale of the use as well as its frequency and regularity. Also in
the Leno Merken case the CJEU held at [29] that genuine use does not include token use for the
sole purpose of preserving the rights conferred by the mark.
48 The defendant also referred to 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 , and in particular
at [26]–[29] of that judgment of the GC. This emphasised that the genuine use of a trade mark
cannot be proved by means of *984 probabilities or suppositions but must be demonstrated by
solid and objective evidence.
49 Ms Himsworth appeared to rely on the judgment in European Drinks [2014] E.T.M.R. 43 to
justify an approach to the evidence which in effect ignored Mr Heilbron’s oral testimony that all
the goods he referred to in his evidence had been sold or offered for sale under and by reference
to the mark as it appears in the CTM. Her approach focused entirely on what could be gleaned
from looking at the exhibits to Mr Heilbron’s evidence. (His exhibits included materials exhibited
to the original Particulars of Claim because this matter was originally to be in the Patents County
Court and they had been sworn by Mr Heilbron.) However, the judgment of the GC has to be
seen in the context in which it was made, an appeal from proceedings in OHIM. In an English
court the oral testimony of a witness who is subject to cross-examination is quite capable of
being regarded as being solid and objective evidence.
50 The presence of Mr Heilbron as a witness gave the defendant the ability to challenge his oral
testimony in cross-examination. The defendant was able to challenge him about his evidence
concerning the manner in which his company’s goods had been sold. The European Drinks case
does not mean that an English court should ignore this kind of evidence.
51 Both sides referred to Silberquelle GmbH v Maselli-Strickmode GmbH (“WELLNESS”)
(C-495/07) [2009] E.C.R. I-137; [2009] E.T.M.R. 28 . In that case the registered proprietor
unsuccessfully contended that it could retain its registration for the mark WELLNESS in relation
to non-alcoholic drinks on the basis of the distribution of promotional branded bottles of water to
purchasers of its WELLNESS clothing. Advocate General Colomer observed that the use of the
mark on the bottles “is a mere tool, a nice gesture to increase the consumer’s loyalty to the
Wellness mark in the clothing sector” and “the bottles of soft drink bearing the Wellness-drink
mark become an advertisement which is completely unconnected with the soft drinks market” and
the CJEU adopted this reasoning of the Advocate General. This shows that when products are
not distributed with the aim of penetrating the market for the goods in the same class, affixing the
mark to those products does not create an outlet for them nor does it distinguish them from
goods of other undertakings in that class.
52 A further important principle which applies in this case is what to do when the trade mark
 Page 21

proprietor has made genuine use of the mark in relation to some goods covered by the general
wording of the trade mark specification and not others. In such a case it is necessary for the court
to arrive at a fair specification in the circumstances ( 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 . This may involve amending the existing specification.
53 The claimant also submitted that it was important for the court to adopt a balanced approach
which fairly reflects the use of the mark as it would be described by the average consumer and
referred to at [55]–[58] of the judgment of Arnold J. in BDO [2013] F.S.R. 35 . It is not the task of
the court to describe the use in the narrowest terms possible unless that is what the average
consumer would do ( YouView TV Ltd v Total Ltd [2012] EWHC 3158 (Ch); [2013] E.C.C. 17 per
Floyd J.). Thus, for example in Pan World Brands v Tripp Ltd (“EXTREME”) [2008] R.P.C. 2 the
*985 Appointed Person (Richard Arnold QC as he then was) held that use in relation to holdalls
justified a registration for luggage generally.
54 The defendant referred to the judgment of Rose J. in Maier v ASOS Plc [2013] EWHC 2831
(Ch); [2014] F.S.R. 16 at [45]–[50] and in particular at [47] in which the learned judge
summarised the relevant approach based on the judgment of Arnold J. in BDO [2013] F.S.R. 35 .
55 A separate point is the argument I have mentioned already arising from the IP TRANSLATOR
case and the conflicting judgments of Arnold J. in BDO [2013] F.S.R. 35 and Sales J. in Total v
YouView [2014] EWHC 1963 (Ch) about the relevance of clarity in a trade mark specification
after grant. The claimant submitted it was not necessary for me to resolve the competing
opinions expressed by Arnold J. and Sales J. because they were concerned with the question of
invalidity whereas this case relates to revocation.
56 In relation to the clarity of the particular word at issue in this case, “clothing”, the claimant
referred to Common Communications originating from the European Trade Mark and Design
Network which concern the practical effect and application of IP TRANSLATOR . The European
Trade Mark and Design Network is a hub which connects the European IP offices, in other words
the IP offices of the Member States as well as OHIM.
57 The Common Communications show that although some class headings may be unclear, the
word “clothing” which is part of the class heading of Class 25, is not mentioned as an example
which is unclear. In fact in one Common Communication the term “clothing” is mentioned as an
example which is clear and precise.
58 The fact that these documents indicate that the word is regarded as clear by these IP Offices
does provide support for the claimant’s case that it is not inherently unclear but they do not mean
that “clothing” would be an appropriate word to use on the facts of this case. That must depend
on what use has actually been made of the mark. I will consider non-use and then, if necessary,
address the alleged inherent vagueness of the term clothing.

Non-use: the facts

59 The two relevant periods for considering non-use were the period from 1 February 2006 to 1
February 2011 which is the five years from the date of entry of the CTM on the register and the
period from 10 May 2008 to 10 May 2013 which is the period of five years prior to the date of the
claim. If the claimant fails to establish genuine use in either period for a given item then non-use
for that item has been proved.
60 The claimant did accept that a number of entries in its CTM should be revoked for non-use.
This included the whole of Class 3, substantial parts of Class 14 and adjustments in Classes 18
and 35. No change was accepted for Class 26. In the important class (class 25) the claimant by
the closing accepted that headgear should be removed but maintained its case that the correct
specification was “clothing, footwear”. The text of the claimant’s proposed revised specification is
Annexed to this judgment as Annex 1. It is marked in such a way as to show the specification as
granted as well.
61 The claimant marshalled the evidence on which it relied to establish use in a schedule S2 to
its closing submissions. This schedule gave the turnover figures for *986 the two relevant
periods and cited examples of use of the mark on the goods which appeared in the evidence.
However the claimant emphasised that its evidence was that all of the goods in the schedule
 Page 22

were used under or by reference to the CTM, perhaps in the shops or appearing in catalogues
and the like. A critical part of the claimant’s evidence from Mr Heilbron is that all the claimant’s
goods were sold with swing tags which carried the CTM and also that the bags, gift envelopes,
receipt cards, pouches, boxes and the like were used in the claimant’s signature pink colour
bearing the CTM. I accept that evidence.
62 The defendant replied to claimant’s schedule S2 with its own schedule VS2, which addressed
each entry in the claimant’s schedule and made submissions. I have worked through both
schedules.
63 I will start with Class 25. The table in Annex 4 shows the turnover figures from the claimant’s
accounting system for goods in the categories in question. The claimant contended that the
figures in the table should remain confidential. The defendant did not oppose that. Accordingly
Annex 4 will not be included in the public version of this judgment.
64 The defendant accepts genuine use in relation to shirts (men and women), polo shirts, socks,
blouses, knitted cardigans, and knitted jumpers. It submits that the registration in Class 25 should
be limited to these categories and not to clothing in general.
65 There are a number of items in this table which I can deal with shortly. I am satisfied that the
claimant has put the CTM to genuine use in the Community in relation to the categories set out
below. My reasons for rejecting the defendant’s case both in general and its detailed submissions
in its rival schedule VS2 are summarised below. The categories are:

i) Jackets (but not suits)The defendant submitted that the evidence only showed use on
limited examples of jackets and no suits. I do not agree the jacket examples are particularly
limited. They include tailored and quilted jackets (there is no reason to doubt the claimant’s
case that quilted jackets were sold in the relevant periods). The turnover is substantial. The
claimant’s accounting system includes turnover in a category for “mens suiting” but it shows
no turnover before 2011 and so none in the earlier period.

ii) Knitwear/jumpersThe turnover figures are substantial. The defendant accepts use in
relation to knitted cardigans and knitted jumpers. It is not clear what the real difference is
between the categories accepted by the defendant and the category advanced by the
claimant. Neither side focused on this. There is clear evidence of use on cardigans,
sweaters and jumpers. There is also an example of a “merino jersey top”. I will accept the
claimant’s category.

iii) Casualwear (including sweatshirts)The turnover figures are substantial. The defendant
submitted that all that had been shown was use on casual shirts or on things in other
categories (such as knitwear, polo shirts etc.) and nothing more. I find clear evidence of use
on casual shirts (e.g. rugby shirts). I also find genuine use on cashmere hooded cardigans
and, in the second period, on a cashmere ladies casual lounge top. Although each could
also be regarded as “knitwear”, they are *987 examples of casual garments which are not
shirts. I accept the claimant’s category.

iv) TiesThe evidence is clear and the turnover figures are substantial.

v) DressesThe evidence is clear and the turnover figures are substantial.

vi) SkirtsAlthough the turnover figures are very small, the evidence is clear.

vii) Tops (including ladies casual)Although some of these items could also fall into other
categories, the defendant accepted some evidence of use of the CTM here. The turnover
figures are substantial.

viii) PyjamasThe turnover figures show tangible albeit small sales in both periods.
 Page 23

ix) Pocket squares and handkerchiefsThe turnover figures are substantial.

x) ScarvesAs in many cases the defendant accepts some evidence of use in the two
periods (e.g. silk scarves here) but does not accept proof of use of the CTM on them.
Bearing in mind Mr Heilbron’s testimony about use of the CTM on swing tags, I find this
category proven. The turnover figures are modest but tangible.

xi) Boxers/underwearThe turnover in both periods is substantial. There is clear evidence of

use in some exhibits, e.g. a 2006 Autumn/Winter catalogue. The goods depicted are always
boxer shorts. There is a text reference to “underwear” in a catalogue which presumably is
also a reference to boxers.

xii) Braces and cummerbundsThe turnover figures show small but tangible sales for both
braces and cummerbunds although the examples in the exhibits are thin.

66 I turn to consider the other goods relied on in Class 25.

T-shirts

67 The use in relation to T-shirts is on an extremely small scale. The turnover figures in the
accounts are the same small sum for both periods. This relates to total value of sales in the years
2008–2011. Those years are within both five year periods.
68 There is only one example in the evidence which shows a picture of a T-shirt from the
claimant. The exhibit might show two T-shirts. The defendant submitted there was no evidence
that the CTM was used in relation to these T-shirt(s). I do not accept that. First Mr Heilbron gave
evidence about the claimant’s swing tags. The second example relied on is a catalogue which
has the CTM on the front page and in which the T-shirt(s) appear. It is true that on the one clear
T-shirt itself, as best one can tell, the back contains a rondel logo with the words “Thomas Pink
Jermyn Street” surrounding a fox which is entirely different from the CTM. The front of the T-shirt
bears a single word which Mr Heilbron thought probably was PINK but the defendant submitted
that if one looked carefully the word was not PINK but was probably four letters TPJS making an
abbreviation for Thomas Pink Jermyn Street. *988
69 I am not satisfied that the writing on the front is PINK, however I am satisfied, first that the
T-shirt(s) which is or are shown in the relevant brochure (Autumn/Winter 08–09) were offered for
sale under and by reference to the CTM and second that the example shown in the evidence and
explained by Mr Heilbron is an example of genuine use of the CTM in relation to T-shirts. It is true
that the scale is tiny but in no sense are these promotional items. It involves putting on the
market by the claimant this particular item of clothing as something available to be bought from
Thomas Pink. The use is nothing like the WELLNESS case. The use is also within both five-year
periods albeit on a very small scale. I find that genuine use of the CTM in relation to T-shirts has
been established.

Trousers

70 The defendant submitted that most of the examples relied on relating to trousers were either
too late or may have been instances of an image not of Thomas Pink trousers but of a model
wearing their own trousers and modelling a Thomas Pink shirt. I accept the date point but not the
“model’s own trousers” point. The turnover figure for the first period is about £72,000. This is
evidence that trousers were sold albeit on a very small scale. The figures for the second period
are somewhat higher. Based on Mr Heilbron’s testimony I find that the CTM has been put to
genuine use in relation to trousers in both periods.

Belts and gloves

 Page 24

71 Very late in the day, the claimant advanced two new categories of goods which it relied on in
Class 25: belts and gloves. There is clear evidence of both gloves and belts being offered in both
periods albeit there are no distinct turnover figures for either, which means the sums must be
very small indeed and subsumed into one of the generic categories. I find there has been
genuine use for both categories.

Beachwear and headgear

72 The claimant accepts it has not used the mark in relation to beachwear although at one time it
did advance a case on beachwear and also dropped its case relating to headgear.

Is “clothing” a fair word to use?

73 I now need to consider what a fair specification would be to reflect the use I have found to be
proven. The claimant submits the term to use is “clothing”; the defendant submits the term
“clothing” would not be appropriate or fair.
74 First I note that Mr Waters accepted that the term “clothing” was clear to him and was a
category he understood. Although it is not a matter only for the evidence of witnesses, Mr
Waters’ evidence is striking and undermines the defendant’s case that “clothing” is somehow
unclear as a category. Even without Mr Waters’ evidence in my judgment the term “clothing” is a
sufficiently clear and precise category to justify its employment in the specification of goods. Mr
Waters’ evidence acts to reinforce that conclusion.
75 Since I reject the argument that “clothing” is inherently unclear, I also reject that ground of
attack on the CTM and do not have to express a view about the *989 conflicting judgments in
YouView [2012] EWHC 3158 (Ch) and BDO [2013] F.S.R. 35 .
76 The real question is whether “clothing” is a fair description having regard to the use actually
made of the CTM by the claimant. The thrust of the defendant’s case is that in reality, apart from
socks, the claimant’s use has been limited to shirts and a few other items worn on the upper
body such as polo shirts, jumpers and cardigans. If indeed that was a fair way to characterise the
goods which have been sold by the claimant then there would be more force in the defendant’s
submission. However the claimant has used the mark on goods including trousers, dresses and
skirts, which all cover at least part of the wearer’s legs. The claimant’s goods also include jackets
and pyjamas, which are different kinds of garments from a shirt or jumper. The goods also
include boxers/underwear, another different kind of garment. The goods include a range of
accessories to be worn such as ties, scarves, handkerchiefs, gloves and belts. The goods
include items which are casual as well as formal.
77 I find that the range of goods in relation to which the claimant has put the CTM to genuine
use, both in terms of the range of kinds of item and range of styles (formal to casual) justifies a
registration in Class 25 based on the description “clothing”. A narrower classification based on
individual items would not be fair.

Footwear

78 The only footwear which the claimant has sold in the relevant period is wellington boots. The
turnover figure in the second five year period is only £2,193 which reflects the fact that what
happened was that the claimant became interested in selling wellington boots as a result of
events at a race meeting and had some boots made. The stock was then sold over a number of
years. According to the claimant’s evidence there were still sales in the second five year period
albeit the quantity was very low. The CTM was used in relation to these goods.
79 I am satisfied that the sales of the wellington boots by the claimant amounted to genuine use
of the CTM. These were items which were being sold as part of normal commerce. There is clear
evidence in a newspaper cutting that the Thomas Pink product was regarded as available and
competing with other wellington boots from other companies selling the same sort of thing. They
were not a promotional item.
 Page 25

80 I am not satisfied that the use made of this mark by the claimant justifies a registration for
footwear in general. Wellington boots are a specific category of item from the point of view of the
average consumer. After all, the claimant itself has never shown the slightest interest in selling
any other kind of footwear. A fair specification to reflect the claimant’s use is “wellington boots”
rather than “footwear”.

Other classes

81 The issue in relation to Class 26 relates to buttons. There is clear evidence of use in relation
to collar stays, stiffeners and supports but in relation to buttons the use relied on is in fact on
collar and shirt studs. However a stud for a collar or a shirt and a button are different things, and
would be regarded as different things by an average consumer. Class 26 needs to be amended
to remove the reference to buttons but to insert studs. *990
82 In Class 18 I find that the claimant has put the mark to genuine use in relation to billfolds,
credit card cases, containers, wallets and wraps made of leather and imitations of leather and not
included in other classes. The real issue was whether the evidence relating to umbrellas,
parasols and walking sticks, for which the turnover figures are very low in both periods (between
£10,000 and £14,000) establishes use in such a way that the CTM was visible. Given Mr
Heilbron’s testimony I accept these as a category of genuine use. Class 18 ought to include
reference to these goods.
83 The claimant maintained that it should be entitled to keep cufflinks and jewellery in Class 14.
There was no dispute about cufflinks.
84 There is clear evidence from the claimant’s accounting system that about £20,000 worth of
something classified as “jewellery” has been sold but there is no evidence about exactly what it
is. The problem with jewellery is that no examples have been given, all one has is the entry in the
claimant’s accounting system. The annual turnover was just over £10,000 in 2008 falling to about
£2,000 in 2012. I am not satisfied that that is enough to support the registration for jewellery in
the CTM because it is not possible to see exactly what sort of goods are referred to. They might
have been rings, brooches or perhaps an expensive kind of cufflink. Mr Heilbron’s evidence does
not elaborate, no doubt because he is not in a position to know and one is left to speculate. The
generic nature of the term “jewellery”, the lack of detail and the tiny turnover figure put this in a
different position from the other goods covered by the claimant’s evidence for which examples
are given showing the items in question. Without an example one cannot know what the
claimant’s accounting system is actually referring to. One is left to speculate. Perhaps a narrower
description could have been supported but bearing in mind that the burden is on the claimant I
am not satisfied that genuine use in relation to this category is made out.
85 The specification for the services in Class 35 are defined using the same terms as the other
classes (save for Class 26). It follows from my decisions above that I accept the claimant’s
proposed specification for the services in Class 35 save for the reference to jewellery. I reject the
defendant’s narrower submission.

Distinctiveness and the UK Trade Mark

86 The defendant contends that the UK TM should be declared invalid as it is not distinctive,
contrary to s.3(1) of the 1994 Act (cf. art.7 CTMR ).Section 3(1) of the Act provides as follows:

“The following shall not be registered

b) trade marks which are devoid of any distinctive character,

c) trade marks which consist exclusively of signs or indications which may serve, in
trade, to designate the kind, quality, quantity, intended purpose, value, geographical
origin, the time of production of goods or of rendering of services, or other
 Page 26

characteristics of goods or services,

d) ….

provided that, a trade mark shall not be refused registration by virtue of paragraph (b),
(c) or above, if, before the date of application for registration, it has in fact acquired a
distinctive character as a result of the use made of it.” *991

87 Thus the first question is whether the mark is prima facie unregisterable pursuant to s.3(1)(b)
and 3(1)(c) and the second question is whether even if it is prima facie unregisterable it has
acquired distinctiveness through use.
88 The claimant submitted that because the UK TM was a stylised form of a word with a visual
element, it could not be said to fall foul of either s.3(1)(b) or 3(1)(c) at all. The defendant
submitted that the claimant was wrong and referred to the judgment of Arnold J. in Starbucks
(HK) Ltd v British Sky Broadcasting Group Plc [2012] EWHC 307 (Ch); [2014] F.S.R. 20 in
particular at [96]. In that case Arnold J. found that a sign consisting of the word “now” with a few
lines coming out of the letter “o” likes sunrays was precluded from registration under both arts
7(1)(b) and 7(1)(c) and these findings were upheld by the Court of Appeal [2013] EWCA 1465
(Civ).
89 One aspect of this debate is whether it is legitimate to regard s.3(1)(c) ( art.7(1)(c) CTMR ) as
applicable when a graphic mark consists essentially of a dominant objectionable word even
though the mark has some other visual content. The point is that because the sub-section refers
to a mark consisting “exclusively” of objectionable content, it could not apply in such a case.
Arnold J. explained in Starbucks [2014] F.S.R. 20 that even if one takes the view that such a sign
is free from objection under art.7(1)(c) ( s.3(1)(c) ) it would still caught by art.7(1)(b) ( s.3(1)(b) ). I
agree.
90 In relation to acquired distinctiveness and the proviso, the defendant emphasised s.100 of the
1994 Act which provides that when a question as to the use to which a registered mark has been
put arises in civil proceedings it is for the proprietor to show what use has been made of it. This
firmly places the burden of proof on the user i.e. the claimant in this case. The defendant referred
to Oberbank AG v Deutscher Sparkassen- und Giroverband eV (C-217/13 & C-218/13) [2014]
E.T.M.R. 56 which emphasised the same point.
91 The claimant relied on Société des produits Nestlé SA v Mars UK Ltd (C-353/03) [2005]
E.C.R. I-6135; [2006] F.S.R. 2 as providing that it is possible to acquire distinctive character of a
mark A when that mark is only used as part of another composite sign B even if sign B is
separately registered as a mark. The defendant did not dispute this proposition as a matter of
principle but submitted it did not apply on the facts of this case. I will return to that below.
92 The defendant also takes the point of law I have expressed already, i.e. that even if the use is
in a composite such as in Nestlé [2006] F.S.R. 2 , the use relied on to acquire distinctive
character must be use of the mark exactly as registered. The claimant submitted that the
defendant’s submission was wrong and relied on Colloseum Holding AG v Levi Strauss & Co
(C-12/12) [2013] E.T.M.R. 34 in which the CJEU held that the analysis in Nestlé must also be
applied in respect of assessing genuine use for the purposes of preserving a registered mark.
The CJEU accepted the arguments for the German and UK Governments that the criterion of use
which is fundamental to the trade mark system must be assessed consistently in all respects.
93 The claimant submitted that the logic of the CJEU’s judgment in Colloseum [2013] E.T.M.R.
34 is to draw an analogy between the assessment of use from the point of view of revocation for
non-use and from the point of view of use to acquire distinctive character and avoid invalidity.
Since use in a form which does not alter the distinctive character of the registered mark is use
which can be taken into account when considering revocation for non-use, this logic means that
when *992 considering whether a mark has acquired a distinctive character the effect of the
same sort of non-identical use can be considered too.
94 I can see no good reason why European trade mark law should be as restrictive as the
 Page 27

defendant’s submission suggests. The defendant makes a strong point that there is no legislative
provision corresponding to s.46(2) ( CTMR art.15(1)(a) ) in the context of acquired distinctiveness
and that the language of the proviso (which is also in art.7 CTMR and art.3 Directive) refers to
the “use which has been made of it”. That is true but not determinative.
95 Proprietors do not always and consistently use a mark in precisely the form as registered. This
is recognised in s.46(2) ( art.15 CTMR , art.10 Directive) which permits such minor variations to
be taken into account in order to avoid revocation of the mark. If such use can be relevant to
avoid non-use it would be unfair to the proprietor to ignore the same use of a mark from the point
of view of acquiring distinctiveness merely because it was not absolutely identical to the
registered mark. For example I can see no good reason why a proprietor should be barred from
relying on oral use of prominent parts of a word or device mark to support the acquisition of a
distinctive character. In an (entirely plausible) situation in which a proprietor has used what it
regards as its core brand in various slightly different forms in different contexts which do not differ
in their distinctive elements, the defendant’s submission would demand an impossible factual
analysis in which one tried to separate out the effect of different acts of use.
96 In this case the mark consists of a descriptive word with some visual additions. The proprietor
of such a mark may conduct its business in such a way as to emphasise the visual elements of
the mark apart from the descriptive word itself in such a way as to enhance their contribution to
the distinctiveness of the mark overall. However a proprietor may also do things to enhance the
distinctiveness of the word itself which will have a knock-on effect of the distinctiveness of the
registered mark. Taking this latter approach does not necessarily require any particular emphasis
on the fine details of the visual additions.
97 The way the trade mark system ensures that the register does not have marks on it which are
not actually in use is through the non-use provisions. There is no good reason to take a more
restrictive approach than that in relation to acquired distinctiveness.
98 For these reasons I prefer the claimant’s submission on this point of law to the defendant’s
submission. In order to support acquired distinctiveness and therefore rely on the proviso in
s.3(1) ( art.7(3) ), a proprietor is entitled to rely at least on use of the mark in a form which differs
from the mark as registered in elements which do not alter the distinctive character of the
registered mark.

Distinctiveness of the UK TM – the facts

99 To address this I will first consider the UK TM as registered and its inherent distinctive
qualities and then consider whether the UK TM has acquired a distinctive character through use.

Inherent qualities of the UK TM

100 It is convenient at this stage to examine both the UK TM and the CTM. The CTM consists of
the word PINK alone above the full name and address in smaller type. In the CTM the word PINK
alone is presented in a particular form. It uses *993 lettering in an outlined style with a slight
shadow. For example in the letter “I”, although the top and bottom horizontal parts are rendered
with single lines, the vertical part consists of two parallel lines, with the right hand vertical thicker
than the left hand vertical to give a shadow effect. The letters have serifs with a slight curve.
Within the outlines there is horizontal cross hatching which could be reminiscent of embroidery
stitching. Some parts of some letters use thin lines instead of an outlined style (e.g. in the “N”).
The name and address are written in a smaller plain sans-serif typeface.
101 I will address below the claimant’s argument that in fact in use both forms of PINK appear
together. At least at first sight the UK TM presents the word PINK in a form which is not identical
to the form of PINK in the CTM. The UK TM also uses lettering in an outlined style. The outlining
appears more pronounced in the horizontal elements of the UK TM than in the CTM. Instead of
cross-hatching the letters in the UK TM used a panelling effect. The little rectangular panelled
parts inside the letters are offset slightly to create an effect similar to the shadow in the CTM. The
lines making up the letters in the UK TM are pink in colour. The background colour is visible both
outside the letters and inside the outline of the letters.
 Page 28

102 To support its case on prima facie or inherent distinctive character the claimant relies on the
special form in which the word “PINK” is presented in the UK TM. The UK TM registrations show
a rectangular box around the word “PINK”. The claimant submitted that the box itself was not part
of the UK TM but was only a border shown to illustrate that the background could be black or
white. Moreover the claimant submitted that the series of two marks (referring to the judgment of
Roger Wyand QC relating to series marks in Comic Enterprises Ltd v Twentieth Century Fox Film
Corp (“GLEE”) [2014] EWHC 185 (Ch); [2014] F.S.R. 35 ) with a background which was black in
one instance and white in another indicated that the background could be any colour bearing also
in mind the principle that a trade mark registered in monochrome covered use in any colour
whereas a trade mark registered in colour covered that colour.
103 The defendant did not agree that the box was not part of the registration. I agree with the
defendant and reject the claimant’s first submission that the rectangle shown in the UK TM is
nothing more than a means for presenting the colour of the background. The box presented in
the UK registration is part of the trade mark. In other words the UK TM is not simply the word
“PINK” in a special form, it is the word “PINK” in a rectangle.
104 As regards the claimant’s second submission, in the GLEE case Mr Wyand QC had to deal
with a series of two marks, one of which was in colour and the other in monochrome. He
addressed the impact of s.41 of the 1994 Act (which defines what a series of trade marks is) and
the cases on the issue at [63]–[73] of his judgment. The defendant also supported the reasoning
of Wyand QC in this section and submitted that the right approach with a series of marks was to
identify a “single point of comparison” (referring to the decision of the Appointed Person Richard
Arnold QC (as he then was) in Sony Ericsson Mobile Communications AB’s Trade Mark
Application, BL O-138/06, 25 May 2006, unreported , set out by Mr Wyand QC at [67] of GLEE . I
accept the defendant’s submission as to the law (which I think was common ground). When
faced with a series mark it is necessary to bear in mind that there is only a single registered trade
mark. All the instances in the series are manifestations of the same mark. So in order, for
example, to carry *994 out a comparison with a sign so as to assess infringement, it is
necessary to work out what the single registered mark is so as to provide a single point of
comparison with the sign alleged to infringe.
105 Unlike the two marks in GLEE , in this case neither mark in the series is entirely
monochrome. Both involve lettering made up of lines in pink colour against a background. The
difference between the two is the background colour inside the rectangle. Counsel for the
defendant submitted that the correct interpretation of the registration is that the mark as
registered consists of the word PINK in the special form shown, presented in a rectangle in which
the background may either be black or it may be white but it may not be any other colour.
106 I do not accept the defendant’s submission because it does not provide a single point of
comparison. The defendant’s submission makes the series two distinct marks, one pink and
white and the other pink and black. I prefer the claimant’s submission that the true interpretation
of this series is that the background colour may be any colour. That approach means that both
instances are instances of the same single mark and provides a single point of comparison.
There must be a box, but the background colour in the box, which is the colour outside the letters
and inside the outlines, can be any colour.
107 Now that the nature of the mark registered by the UK TM has been determined I can
consider whether it satisfies s.3(1)(b) or s.3(1)(c) .
108 The mark is predominately the word “PINK”, which describes a characteristic of clothing. The
rectangular box and the fact that the lines of the lettering are in a pink colour do not seem to me
to add anything sufficiently significant visually to avoid either s.3(1)(b) or s.3(1)(c) . The
claimant’s best case relates to the special form in which the letters are presented. It was not
disputed that the particular form is unique to the claimant and was designed especially for it.
Despite this I find that the UK TM as registered does not prima facie satisfy either ss.3(1)(b) or
s.3(1)(c) . Even if the visual elements could be regarded as enough to avoid s.3(1)(c) on the
basis of the word “exclusively”, in my judgment the mark does not prima facie avoid s.3(1)(b).
Accordingly for it to remain on the register it needs to have acquired distinctiveness and thereby
obtain the benefit of the proviso.

Has the UK TM acquired distinctiveness?

 Page 29

109 The claimant does not use a mark which looks exactly like the image appearing on the UK
register on any goods or in any shop, paper material or anything else. However the claimant
submits that in fact:

i) the presentation of the word PINK in the UK TM is the same as in the presentation of the
word PINK in the CTM save that in respect of the UK TM the letters are unfilled whereas in
respect of the CTM the letters have been filled in with black ink; and

ii) the device used predominantly by the claimant e.g. on bags, swing tags, labels and other
packaging, which presents the CTM on a pink background, in fact involves overlaying the
CTM on top of the UK TM whereby the UK TM is applied as an outline known as a stroke to
increase the legibility against that background. A colour illustration to demonstrate this point
was presented on the claimant’s closing skeleton. The first two rows show how a
monochrome word is rendered with a black infill or with a pink stroke and the last row
shows the combined result. The last row depicts the word *995 PINK as it appears
frequently in the claimant’s swing tags, labels and packaging. The illustration is:

(This diagram only makes sense in colour)

110 The defendant contended that this submission was based on evidence which had not been
called at trial. I agree. Moreover it is plainly wrong. The argument ignores that fact that the UK
TM requires the lines of the letters P, I, N and K to be in a pink colour. The image on the third
row, which does correspond to the way PINK is commonly used by the claimant, is not use of a
mark identical with the UK TM for the simple reason that the lettering is not in a pink colour. The
suggestion, if made, that the pink lines are present but just do not show up against the pink
background, is not sensible.
111 The real issue is whether the UK TM has acquired distinctiveness as a result in particular of
the extensive use of PINK by the claimant. There is clear evidence that the claimant uses the
CTM against a pink background in its form as registered, and also sometimes with a line
separating PINK from the address, on a very extensive scale and has done so for many years.
Moreover I find that the claimant has used the mark PINK as shown in the third row of the
illustration above against a pink coloured background and also against other backgrounds, on an
extensive scale for many years. The use has been on and in relation to the various items of
clothing and other goods discussed above already.
112 The CTM when presented on a pink coloured background includes a mark consisting of the
word PINK in an outlined format as a composite part of it. That mark differs only in immaterial
aspects from the UK TM as registered. The differences between the format of PINK in the CTM
and PINK in the UK TM are extremely minor and would not be regarded as distinctively
significant by any average consumer. The typescripts are very close, a pink colour is present
albeit in a different place (background rather than lettering) and the lack of a rectangle is not
significant. The important distinctive element of the UK TM is the word PINK in a special format
and that is what the average consumer would perceive in use. Accordingly the claimant’s use of
 Page 30

the CTM is capable, at least in principle, of leading to the acquisition of distinctive character by
the UK TM.
113 Given the very extensive use of the CTM over a lengthy period and given all the other
evidence of distinctiveness such as the evidence of the claimant’s staff witnesses, I find that the
UK TM has acquired a distinctive character and accordingly can take the benefit of the proviso to
s.3(1) .
114 The UK TM has acquired a distinctive character in relation to all the goods for which it is
registered. There was no suggestion that if the UK TM had acquired *996 distinctiveness
through use, nevertheless that did not support the scope of specification of goods and services
for which the UK TM was registered.

Infringement of the Trade Marks

115 The claimant submits that the defendant infringes the CTM and the UK TM both under
art.9(1)(b) CTMR / s.10(2) and also under art.9(1)(c) CTMR / s.10(3) . I will consider likelihood of
confusion under art.9(1)(b) CTMR / s.10(2) first. This involves a number of factors:

i) Average consumer.

ii) Comparison between the goods or services.

iii) What sign has the defendant used?

iv) Context of the use.

v) Distinctiveness of the registered marks.

vi) Evidence of actual confusion?

vii) Comparison between the registered marks and the signs.

viii) Conclusions on likelihood of confusion.

116 Once those factors have been addressed I can consider likelihood of confusion globally for
each relevant circumstance.

Average consumer

117 The likelihood of confusion is assessed from the perspective of the average consumer of the
goods or services in question. The average consumer is always deemed to be reasonably well
informed, observant and circumspect although his or her level of attention may vary depending
upon the nature of the goods or services in question and how they are acquired. The average
consumer is not a single person but represents a distribution of consumers; see the review of the
law in this area by Arnold J. in Jack Wills v House of Fraser [2014] EWHC 110 (Ch); [2014]
F.S.R. 39 at [63]–[65]. Referring to Interflora Inc v Marks and Spencer Plc (“Interflora I”) [2012]
EWCA Civ 1501; [2013] F.S.R. 21 the defendant emphasised that the average consumer test is
normative and it falls to be applied objectively by the judge from the perspective of the relevant
construct.
118 Here the average consumer is a consumer of clothing. There are several features of this
average consumer which fall to be considered:
 Page 31

i) The average consumer represents a spectrum of consumers who are from different
backgrounds and shop in different ways; some will be tourists, others will be locals to an
area, some will shop for themselves, and others will be buying a gift for someone else.

ii) Although many consumers of clothing are very brand conscious that does not apply to all
consumers. In my judgment the average consumer will exercise a moderate degree of
attention to branding but will not scrutinise the fine print of swing tags and labels.

iii) Consumers of clothing vary enormously in their tastes and their means. At times in the
argument the defendant appeared to be advancing a case which divided the average
consumer into a consumer of low end clothing (who might buy the defendant’s products)
and a consumer of luxury clothing (who might buy the claimant’s products). The extent to
which this may be *997 relevant to passing off is something which would only be relevant
to that claim, but in relation to the question of registered trade mark infringement for a mark
registered for clothing it is not relevant. The average consumer represents consumers at all
levels of the market.

iv) The average consumer represents both male and female consumers. In addition both
sexes will buy products for themselves and for members of the opposite sex as presents.

v) Consumers of clothing shop in different contexts, sometimes people set out to buy a
particular thing or to buy something for a particular occasion, but in other circumstances
shopping is an end in itself and the consumer is simply browsing. As the claimant
submitted, this is evidenced in large shopping malls such as Westfield or Bluewater or at a
famous department store where shoppers might go and “have a wander” or perhaps drop
into a shop which catches their eye.

vi) Where the average consumer shops in retail stores, he or she is likely to be drawn inside
based on 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.

vii) Consumers come to expect that a shop front for example on a street or in a shopping
centre represents a single store. Two shop fronts, even if adjacent, are not without some
other indication going to be assumed to be linked to each other.

119 In making the findings above, I am essentially accepting the claimant’s submissions.

Comparison between the goods and services

120 The goods for which the UK TM is registered are set out in Annex 3 .
121 The defendant sells various items of clothing and other things. No definitive list of the
defendant’s goods was produced by either side. A convenient list of the items of clothing sold by
the defendant is the following (the groups may overlap): underwear (including lingerie),
sleepwear, loungewear (such as vest tops and yoga pants) and sportswear, beachwear,
swimwear, blouses, T-shirts, ladies tops and sweaters. These are all identical goods to clothing
(relevant to the CTM).
122 The clothing goods identical to the UK TM registration are blouses and beachwear. The
remaining items sold are similar to those in the UK TM registration. For example underwear
including lingerie is similar to nightwear and boxer shorts, sleepwear is identical or similar to
nightwear, swimwear is similar to beachwear, T-shirts are similar to polo shirts.
123 The only footwear in evidence sold by the defendant are flip-flops. They are identical to
footwear (UK TM). The defendant submitted they were not similar to wellington boots (relevant to
 Page 32

the CTM). I do not agree. Although flip-flops and wellington boots do not compete with one
another they are both kinds of footwear and are sold in the same trade channels to similar kinds
of consumer.
124 Considering other goods the claimant submitted and I agree that towels were similar goods
to beachwear (UK TM) and clothing (CTM), that phone cases were similar to credit card cases
(UK TM and CTM) and to containers made of leather and imitations of leather (CTM). *998
125 The defendant also sells beauty products and personal care products such as perfumes and
lotions. It submitted there was no similarity between these and any of the goods in Class 25 or
any other classes for which the claimant’s marks are registered. The claimant submitted, based
on Mr Heilbron’s evidence, that consumers encountering a fashion brand would expect it to cover
both clothing as well as accessories and fragrances. He was not challenged. Mr Waters’ view
was that for a clothing mark to have a complementary perfume product was true at the luxury end
of the fashion market but not the mass sector. I find that perfume and the other beauty and
personal care products are similar to clothing and accessories. The latter include, for example,
scarves which are expressly part of the UK TM.
126 Another range of fashion accessories sold by the defendant are bags. The claimant
submitted these were similar to clothing (CTM). I agree. They are sold in the same trade
channels to the same users and are often made of similar materials. They are also similar to
“billfolds, credit card cases, wallets” in Class 18 (UK TM).
127 The retail services offered by the defendant are all either identical or similar to the services
registered in Class 35 for the CTM. On the question of retailing beauty products, the UK TM
registration in Class 35 also refers to non-medicated toilet preparations.

What sign has the defendant used?

128 The defendant submitted that its use could be divided into four categories:

i) use of VICTORIA’S SECRET PINK in lock up format;

ii) use of PINK above the trade mark VICTORIA’S SECRET;

iii) use of PINK as an element in a slogan in various different configurations; and

iv) use of PINK alone (in various scripts).

129 The defendant provided examples of these four categories and they are depicted in Annex 2
below. The categories are reasonable although I remind myself that in principle each different
presentation of PINK by the defendant is in issue and might need to be considered separately.
130 There was a dispute about the first category. The claimant did not accept that the defendant
had ever used the words “VICTORIA’S SECRET PINK” in lock up format in the United Kingdom.
Only two examples were relied on by the defendant as use of the phrase in that form. They are
both shown in box 1 of Annex 2 .
131 The first example is on a brass plate outside Lancashire Court which leads off Bond Street to
the defendant’s PINK store. In it PINK appears prominently below VICTORIA’S SECRET. The
word PINK is written in an outlined typeface whereas VICTORIA’S SECRET is written differently.
It is not use of VICTORIA’S SECRET PINK in lock up format. It is a format which places an
emphasis on PINK and draws a distinction between VICTORIA’S SECRET and PINK. This
example is the only instance in which these signs are presented in this way in the evidence.
There is no product on which the signs appear like this.
132 The other instance relied on was on Facebook. Here the sign used is the words VICTORIA’S
SECRET PINK in lock up format. However the claimant did not accept that the Facebook
 Page 33

presence was targeted at consumers in the United Kingdom or Europe. This was part of a wider
point by the claimant that certain instances of use referred to by the defendant in the context of
its arguments on acquiescence *999 and due cause were not relevant as they had not taken
place within the United Kingdom or European Union.
133 The law is clear that in deciding whether what happens on a website amounts to use of the
sign within the European Union, the fact that a website can be accessed from the European
Union is not enough ( 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 at [64]). The question is whether the website targets
consumers in the relevant territory. In the BDO [2013] F.S.R. 35 case Arnold J. collected together
the various authorities on this point (at [100]–[107]) and I cannot improve on his analysis.
134 The claimant submitted that the Facebook presence was and had always been targeted to
the United States and so did not constitute relevant use in the United Kingdom/European Union.
135 No doubt users in the United Kingdom and elsewhere in the European Union could and did
access the site but all indications on it show that from the time when it started until sometime
approximately in 2012 the Facebook postings were not targeted to the European Union or United
Kingdom. The language was US English, the currency was US dollars, no telephone numbers
appear directly but the Facebook page links to the L Brands’ US website with US telephone
numbers. The vast majority of the content refers to US college type events at US universities. In
addition to the events at US universities, the content referred to US store openings, sales for US
specific holidays and posts in support of the US Olympics team.
136 Sometime in 2012, the Facebook postings started including references to events in the
United Kingdom. The events are usually store openings. The evidence shows examples of about
six or seven. There might have been a few more. No other change has been drawn to my
attention. The question is whether this means that it is correct to say that the Facebook presence
is today targeted at consumers in the United Kingdom. In my judgment it is not. Merely adding a
few recent postings which refer to events in the United Kingdom is insufficient to alter the
targeting of the defendant’s Facebook presence bearing in mind the other factors I have
considered.
137 Thus I find that VICTORIA’S SECRET PINK in lock up format has not been used in the
European Union by the defendant (or by its affiliates). Nevertheless in case my conclusion on the
targeting of the Facebook site is wrong, I will consider the infringement case against VICTORIA’S
SECRET PINK on Facebook in any case.

Context of the use

138 The Court of Appeal in Specsavers v Asda [2012] EWCA Civ 24 held that when considering
infringement the sign is not to be considered stripped of its context. The parties could not agree
how this was to be applied in this case and could not agree how widely the court should cast the
net when considering the context in which the defendant uses the sign complained of. This
argument also interacts with the debate about the nature of the sign actually used by the
defendant. For example consider the brass plate in Lancashire Court shown in box 1 of Annex 2 ,
that could be (a) use of the sign PINK in a context consisting of a brass plate carrying the words
VICTORIA’S SECRET above it or (b) use of the sign VICTORIA’S SECRET PINK, albeit that
PINK appears in a different typeface from the earlier words. *1000
139 The point in the argument at which this debate has most force is in relation to the numerous
cases in which the defendant has put the word PINK alone on a garment (examples above and in
box 4 of Annex 2 ). Here it is manifest that the sign to be considered is the word PINK (presented
in a particular form in a particular case). However the defendant submits that two things also play
a role as relevant context. First is the fact that every garment has a swing tag or label such as a
neck label or both on which the words VICTORIA’S SECRET appear. The swing tag or label
looks like box 2 of Annex 2 . Second is the fact that the defendant’s goods are sold in shops
which include numerous prominent references to VICTORIA’S SECRET. Moreover the
defendant’s PINK stores are generally physically linked to a VICTORIA’S SECRET store and the
customer can walk inside between them. That is also submitted to be part of the relevant context.
140 The claimant did not accept that either of these things are relevant context. It argued that a
 Page 34

realistic scenario would be to consider an average consumer encountering someone else

wearing one of the defendant’s products such as a casual top with PINK written across the front.
In that scenario neither the store nor the swing tag nor neck label would be visible and could not
play any part. Therefore neither element could be part of the relevant context when considering
whether that sign infringed.
141 At [87] of Specsavers v ASDA [2012] EWCA Civ 24 , Kitchin L.J. held that the general
position is that the matter had to be considered from the perspective of the average consumer of
the goods and must take into account all the circumstances of that use that are likely to operate
in that average consumer’s mind in considering the sign and the impression it is likely to create.
The sign is not to be stripped of its context.
142 I will consider the use of the sign PINK by the defendant when it is emblazoned prominently
on a garment. Used in this way the sign is meant to be seen by persons other than the wearer
when the garment is worn after purchase. The defendant rightly did not suggest that this sort of
use was purely decorative. It is not. A person looking at someone wearing one of these items of
clothing will see the sign PINK as having some origin significance. In this context the person
seeing the garment will not see a neck label or a swing tag nor any other indication of where the
goods have been bought.
143 I find that in considering the effect of the use of the sign visibly on a garment, this post-sale
context is a realistic and fair context in which to do so. It does not involve either of the two further
elements relied on by the defendant, neither the swing tag (etc.) nor the shop.
144 These conclusions also apply to the uses of PINK with a slogan such as in box 3 of Annex 2
. Whether they are examples of the sign PINK alone with the slogan and device as part of the
context or use of a composite sign consisting of the entire slogan and device has no practical
significance in this case. Either way the slogan and device fall to be considered. They are
presented prominently on the garments to be seen after sale and cannot rely on either a swing
tag (etc.) or a shop layout as relevant context. Also they are not merely decorative in nature but
would be understood as having some origin significance.
145 This post sale context is also applicable to the other products, such as the defendant’s body
lotion, which have PINK emblazoned prominently across the front along with the words
VICTORIA’S SECRET underneath. These goods are *1001 not worn post sale but nevertheless
the sign PINK is presented so as to be seen after purchase.
146 In addition to the post-sale context there are three other potentially distinct contexts or
situations which fall to be considered on the facts of this case:

i) the proper context to consider swing tags and labels;

ii) the proper context to consider the signage on the defendant’s PINK shops; and

iii) the Facebook presence.

147 The swing tags and garment labels ought fairly to be considered in the context of the
defendant’s store because it is in a shop that the average consumer will look at them. In fact
there are two kinds of PINK shop—some are physically linked to a VICTORIA’S SECRET store
and some are free-standing.
148 In considering the impact of the shop signage, if there is a likelihood that the average
consumer would be drawn inside a retailer’s premises as a result of shop signage on the street
which is confusingly similar to another retailer’s trade mark, then that is a relevant likelihood of
confusion from the point of view of the retail services in Class 35. It would remain relevant
confusion even if the consumer was later disabused of their mistake once they entered the
premises. This is because the purpose of a shop sign on a shop is to draw the consumer inside
the premises. That is how a trade mark for retail services works. It acts as a badge of the origin
of the retail services themselves rather than a badge of origin of the goods on sale. It does not
operate at the point of sale of individual goods, it operates at the point at which the consumer
 Page 35

chooses to enter the shop. The claimant referred to the judgment of Arnold J. in Och-Ziff
Management Europe Ltd v Och Capital LLP [2010] EWHC 2599 (Ch); [2011] F.S.R. 11 on the
matter of “initial interest confusion”. I would not characterise the confusion I have described
relating to retail services as mere initial interest confusion.
149 Accordingly when considering the proper context of a shop sign, it is fair to consider what is
visible in the shop windows. They are part of the context in which an average consumer
encounters the shop sign and decides whether to enter the shop. However they will vary from
day to day and care needs to be taken in placing too much weight on what is shown in a shop
window. It is not fair to take into account the details of the internal elements of a shop which are
not clearly visible from the street.
150 The Facebook presence involves another distinct context compared to the previous ones.
The interior of the defendant’s retail premises has nothing to do with how the average consumer
will perceive postings on Facebook.

Distinctiveness of registered marks

151 The UK TM has acquired a distinctive character through use and that use will also have
acted to support the distinctive character of the CTM. However the fact remains that pink is a
colour. If a consumer asks for a “pink shirt” they may mean to refer to the claimant or they may
simply be referring to the colour of the item. I would characterise the level of distinctiveness of
the claimant’s two marks as a normal level. The marks do not enjoy an enhanced level of
distinctiveness.
152 The name THOMAS PINK and address are present in the CTM. The name has its own origin
significance and the address has a significance to some consumers *1002 as relating to shirt
making. However the prominent element of the CTM is the word PINK in the outlined format. For
the UK TM, the prominent element is also the word PINK in a particular format. The typeface
used in the UK TM differs in detail from the CTM but is very close to it. I doubt the average
consumer would notice the difference.

Evidence of actual confusion

153 The claimant called evidence from thirteen members of staff who attended for
cross-examination. They were Evelina Jankute, Helen Petty, Kim Dwelly, Aron Lias, Justin
McGauley, Natasha Shakespeare, Tara Connell, Lynsey Jackson, Leo MacKillop, Robin Jago,
David Mougin, Caroline Kindregan and Marine Darnige. Each gave their evidence fairly, trying to
assist the court to the best of their recollection. David Mougin is the country manager for the
claimant in France and both he and Marine Darnige gave evidence about events in the claimant’s
stores in Paris. In the United Kingdom the evidence covered events in London (Jermyn Street
and Waterloo station), Manchester, Bristol and the Bluewater shopping centre in Kent. In Ireland
Caroline Kindregan gave evidence about the “Kildare Village” outlet centre. The claimant also
served a Civil Evidence Act notice and witness statement of Clodagh Maher, the Kildare store
manager.
154 All of the witnesses experienced occasions on which members of the public appeared to be
confused. A common kind of confusion was an assumption that one of the claimant’s outlets sold
lingerie or other goods which were in fact the defendant’s goods. Once an individual tried to
return an item bought from the claimant to the defendant. Sometimes an individual thought the
claimant was a branch of the defendant or connected with the defendant. There were other
examples.
155 A number of the examples could be criticised in detail. For example on a couple of occasions
it is not clear whether any relevant confusion at all took place. The defendant can also point out
that the claimant had the means to identify and call at least a couple of the individuals who were
allegedly confused. One person seems to have been from outside the European Union and
another was a complete one-off.
156 The defendant pointed out that the gathering together of this evidence was something done
for the purposes of these proceedings, that Mr Heilbron was himself unaware of any instances of
 Page 36

confusion until they came to his attention as a result of this exercise and there was no evidence
of any confusion being brought to his attention spontaneously. The defendant is correct.
157 The defendant also submitted that given the range of locations covered by the witnesses and
the number of customers who enter the claimant’s shops, these examples are of a very limited
nature and once one discounted the problematic examples (mentioned above) the remainder
was so small in number as to be of no assistance.
158 One example was an individual on the telephone who was aware of both Thomas Pink and
Victoria’s Secret and had rung the claimant’s store and been told it was “Thomas Pink” but still
came to the claimant without realising it was not the defendant. The defendant suggested this
was an example of a person who was not reasonably well informed and circumspect and
therefore irrelevant. However it is not that simple. This evidence, which is inconvenient to the
defendant’s case, could just as easily be interpreted as showing that even reasonably well
informed and *1003 circumspect consumers are still confused and do not notice the significance
of the word THOMAS. Without calling the individual one cannot say.
159 Some of the examples involved members of the public wrongly assuming that the claimant or
the claimant’s shop was associated with the defendant. Although that sort of confusion is in a
sense the wrong way round, it is capable of being relevant to establish a likelihood of confusion
and the likelihood of a link for the purposes of s.10(3) / art.9(1)(c) .
160 However when I stand back and consider it overall, the claimant’s evidence of actual
confusion is not of sufficient weight to lend any significant positive support to the claimant’s case
but it does play an important negative role in this action. Its existence is sufficient to prevent the
defendant from credibly contending that there is no evidence of actual confusion in the United
Kingdom or European Union.
161 For the defendant Mr Cook explained that he was not aware of any confusion and neither
were his colleagues. I am sure he was telling the truth. Nevertheless I am not satisfied the
defendant organisation has undertaken a thorough search for such evidence. The evidence from
the defendant does not rule out the existence of customer confusion here.
162 The defendant also pointed to lack of evidence of confusion in the United States, despite the
many years of side by side trading there. That is a submission the defendant can credibly make. I
infer there is no significant confusion taking place in the United States. However I am not
satisfied that trading conditions and the relative positions of the parties in the United States are
sufficiently similar to the United Kingdom or European Union for this to be a matter on which
much weight can be placed.

Comparison between registered marks and the signs

163 The defendant uses PINK in various ways. A frequent way in which the defendant presents
PINK is in an outlined typeface:

164 That is the manner of presentation on the shop front, the swing tags, the neck labels and the
brass plate. It also appears this way on the front of some garments and other products. That form
of PINK is very similar to the prominent element of the CTM and the UK TM since it involves the
 Page 37

word itself. The outlined typeface enhances the similarity between the sign and the mark.
165 PINK is also frequently presented by the defendant without the outlined typeface (examples
in box 4 Annex 2 ). On these occasions the sign is still very similar to the prominent element of
the CTM and UK TM.
166 The defendant also uses PINK in a slogan such as “Life is PINK is life”, “LOVE PINK” and
“Property of the University of Pink”. Use in a slogan by the defendant will reduce the similarity
between PINK and the claimant’s marks somewhat, particularly since they are device marks, but
that reduction will not be substantial because using a brand in this way is something the average
consumer will be *1004 familiar with. The claimant too uses slogans involving PINK such as “Any
colour as long as it’s … PINK” and the rondel used on a T-shirt with the word “Thomas Pink
Jermyn Street”.
167 On the swing tags, labels and in other places the defendant presents PINK in the outlined
typeface above VICTORIA’S SECRET in much smaller writing and a simpler typeface. Examples
are given in this judgment. The average consumer will perceive this as the presentation of two
distinct signs. One is the sign PINK. It is large, prominent and in its own typeface. It is also often
in a red colour. The other sign is VICTORIA’S SECRET. That is a sign which the average
consumer will recognise in its own right. To the average consumer it is a very well known brand
of lingerie. The presence of VICTORIA’S SECRET is an important part of the context in which the
sign PINK is being presented but the sign cannot fairly be characterised as “PINK VICTORIA’S
SECRET” or even “VICTORIA’S SECRET PINK”. It is neither of those things.
168 The shop sign involves the slogan “Life is PINK is life” with PINK presented in the outlined
typeface and VICTORIA’S SECRET written in small writing underneath. The average consumer
would perceive this as the sign PINK being used in a slogan. The sign VICTORIA’S SECRET is
also part of the context but is not prominent.

Conclusions on likelihood of confusion section 5(2)/article 9(1)(b)

169 I find that the use of PINK emblazoned on the defendant’s items of clothing gives rise to a
likelihood of confusion with the CTM on the part of the average consumer. This arises for all the
examples in box 4 Annex 2 . The goods are identical, the sign is very similar to the mark and
nothing in the context will act to reduce a likelihood of confusion.
170 I reach the same conclusion in relation to the use of PINK in slogan and device format as
shown in all the examples in box 3 Annex 2 on items of clothing. The goods are identical and
nothing in the context will act to reduce a likelihood of confusion. Use in a slogan and device will
reduce the similarity with the marks a little but not enough to avoid a likelihood of confusion.
171 I find that the defendant’s shop fascia on its free-standing stores also gives rise to a
likelihood of confusion. The retail services are identical. The slogan acts to reduce the similarity
but only a little. The reference to VICTORIA’S SECRET is too small to play a material role. The
outline format of PINK enhances the similarity. The evidence does not show that the shop
window displays are such as to have major significance (e.g. Bundle 3A/11/1). To the extent that
there are any references to VICTORIA’S SECRET in the window they are not sufficiently
prominent or consistent to have a material effect.
172 The fact that some PINK stores are beside a VICTORIA’S SECRET store or linked inside
does not make any difference. The link inside is irrelevant. The average consumer would not
normally pay any attention to or attribute any origin significance to the name of a shop which is
located beside another shop.
173 These conclusions also follow for the other goods of the defendant (flip-flops, beauty
products, towels and accessories such as phone cases and bags). Even in the cases in which
the goods are not identical, they are similar and I find a likelihood of confusion. *1005
174 Thus I find all of the defendant’s activity using signs of the kind shown in boxes 3 and 4 of
Annex 2 give rise to a likelihood of confusion.
175 I now turn to consider the swing tags and garment labels on clothing. Examples are in box 2
Annex 2 . These swing tags and labels all use the outlined format of PINK, which increases the
 Page 38

likelihood of confusion but they also present the name VICTORIA’S SECRET in small writing
underneath. That reduces the likelihood of confusion but on its own I am not convinced it would
be sufficient to avoid infringement under art.9(1)(b) CTMR . On the swing tags and labels the
sign PINK plays an independent distinctive role. On this point the claimant relied on the decision
of the CJEU in Medion AG v Thomson Multimedia Sales Germany & Austria GmbH (C-120/04)
[2005] E.C.R. I-8551; [2006] E.T.M.R. 13 .
176 The decisive factor in my judgment is the retail context inside the shops. The evidence was
that for the Bond Street/Lancashire Court store(s) the vast majority of customers (99.2 per cent)
walk into the store via the Bond Street entrance which is branded only with VICTORIA’S
SECRET. They get to the PINK part by passing through the VICTORIA’S SECRET store. When
the average consumer encounters the PINK swing tags and labels in that store they cannot fail to
have understood that they are in a VICTORIA’S SECRET store.
177 The claimant’s best case would be to consider the swing tags and labels in the context of the
defendant’s free-standing PINK stores. Here the customer will not have entered through a
prominently marked VICTORIA’S SECRET entrance, they will have walked in under the PINK
fascia addressed above. This enhances the likelihood of confusion. However once inside the
shop the customer who looks at swing tags and labels will be looking closely at the goods. They
will be surrounded by merchandise all of which is marked with the swing tags and labels which
refer to VICTORIA’S SECRET as well as to PINK. The receipt is clearly marked VICTORIA’S
SECRET and has the VICTORIA’S SECRET returns policy on the back. Although the receipt is
obviously provided after the customer has bought the item, it is fair to take this into account as
part of the retail context inside a shop. Mr Cook also explained that when customers queue for
the changing rooms they are exposed to brand education material. I accept (although Mr Cook
did not say so in terms at that point in his testimony) that this will include references to
VICTORIA’S SECRET as well as PINK.
178 In summary I find that even inside a free-standing PINK store there is sufficient emphasis on
VICTORIA’S SECRET to counteract what might otherwise have been a likelihood of confusion
under art.9(1)(b) relating to the swing tags and labels. This applies to all goods sold by the
defendant in this way. The sign PINK is not sufficiently distinctive to retain a distinctive role
independent of the well known brand VICTORIA’S SECRET when it appears on swing tags and
labels in the retail context inside the defendant’s PINK stores. Thus I reject the case under
art.9(1)(b) relating to the swing tags and labels as shown in box 2 Annex 2 .
179 In addition to the swing tags and labels, the defendant does sometimes use PINK
emblazoned on the front of its goods along with the word VICTORIA’S SECRET. One example is
the body lotion shown at [13] above. There the words VICTORIA’S SECRET are truly tiny. The
words only extend under the letter K and half of the letter N. It is fair to consider these goods in
the post sale context and absent the impact of the retail context of one of the defendant’s PINK
stores. In these examples PINK plays an independent distinctive role. The words VICTORIA’S
SECRET *1006 do not negative the likelihood of confusion. This use infringes under art.9(1)(b)
CTMR .
180 Although the brass plate is not representative of the way in which the defendant trades, I
need to consider whether it infringes. The brass plate relates to the presence of the defendant’s
store in Lancashire Court. The sign is being used by reference to identical retail services. The
sign PINK on the plate has an independent distinctive role. I find it infringes under art.9(1)(b) .
181 Finally I will consider Facebook. I find that even if it was targeted to the United Kingdom or
European Union, the use of VICTORIA’S SECRET PINK in lock up format would not give rise to
a likelihood of confusion. The context of this use is very different from any of the other examples.
The site is not selling goods to the public, it is part of the general promotional activity of the
defendant and its affiliate companies. It would be seen as such by the average consumer. The
sign VICTORIA’S SECRET PINK in this context would not be regarded by the average consumer
as a compound in which PINK plays an independent distinctive role. Firm emphasis is placed on
the well known VICTORIA’S SECRET lingerie brand. Even if the site is targeted at the United
Kingdom or European Union, it would not infringe under art.9(1)(b) .
182 So far I have considered the CTM. I reach the same conclusions under s.10(2) in relation to
the UK TM. The distinctions between the analysis applicable to the CTM and the one applicable
to the UK TM are that the comparison between the mark and the sign is somewhat different (see
 Page 39

above) and a number of the defendant’s goods are similar rather than identical. Neither
distinction makes a material difference to my conclusions.

Infringement under article 9(1)(c) CTMR/section 10(3)

183 The factors to be taken into account in this case in considering infringement under art.9(1)(c)
CTMR / s.10(3) are:

i) Reputation

ii) Link

iii) Due cause

iv) Detriment

184 The claimant also pleaded an allegation of infringement based on unfair advantage but I do
not regard that as tenable in this case and I will not consider it further.

Reputation

185 The defendant admitted that the claimant (and thus the CTM) had a sufficient reputation in
the European Union within the meaning of CTMR art.9(1)(c) for formal shirts. The claimant
submitted its reputation was wider than that. I agree up to a point but the reputation does not
extend to clothing generally. The claimant is best known as a luxury retailer of shirts. The
claimant has a major reputation for these goods. Its reputation extends more widely albeit at a
somewhat lesser level, at least to casual clothing such as casual shirts, casual tops and polo
shirts and also to knitwear and ties. It includes goods for men and for women. I find that the
reputation includes boxer shorts and socks but is no more widely drawn than that. It does not
extend to any of the other categories in the turnover table set out in *1007 Annex 4 . For example
the reputation does not extend to skirts, dresses, trousers, scarves, footwear or T-shirts.
186 In summary the CTM has a major reputation relating to the luxury shirts and a sufficient
reputation to satisfy art.9(1)(c) for casual tops and knitwear for men and women and also for ties,
boxer shorts and socks.

Link

187 Since a link is necessarily established between conflicting marks when there is a likelihood
of confusion ( Intel Corporation Inc v CPM United Kingdom Ltd (C-257/07) [2008] E.C.R. I-8823;
[2009] R.P.C. 15 at [57]), I will focus on the instance which I found did not give rise to a likelihood
of confusion under art.9(1)(b) . That is use of PINK, with VICTORIA’S SECRET in small writing
underneath, on the swing tags and labels considered in the context of the defendant’s retail
stores.
188 Intel [2009] R.P.C. 15 (at [48] and [49]) considered the overlap between the relevant sections
of the public for the earlier and later marks. If there is no overlap at all then there can be no link
(at [48]). Even if the two sections are the same or overlap to some extent there may be no link
because the goods are so dissimilar that the later mark is unlikely to bring the earlier mark to
mind. Intel is concerned with conflicting marks rather than a case of alleged infringement and so
it made sense to talk about the relevant section of the public as regards the goods for which the
later mark is registered. In an infringement case, like this one, one needs to consider the goods
or services actually sold or provided by the defendant, rather than the scope of a later trade mark
registration.
189 In Intel [2009] R.P.C. 15 (at [51]) the CJEU refers to a case in which the mark has acquired a
 Page 40

reputation which goes beyond the relevant public as regards the goods or services for which
those marks were registered. This case involves the converse, a situation in which the reputation
relates to a range goods which is more narrowly drawn than the goods covered by the
registration. In such a case the relevant section of the public which falls to be considered relating
to the earlier mark must be that section aware of the claimant’s reputation. Otherwise the
requirement for the existence of a reputation when considering art.9(1)(c) makes little sense.
Moreover since for example a link with an earlier mark is established if the average consumer
seeing the later mark calls the earlier mark to mind ( Intel at [60]), that only makes sense if one is
considering an average consumer who is aware of the earlier mark’s reputation in the first place.
I note that in Jack Wills [2014] F.S.R. 39 (at [61]–[62]) Arnold J. came to a related conclusion in a
case concerning the acquisition of distinctive character in relation to some but not all goods for
which it is registered.
190 Thus, based on Intel [2009] R.P.C. 15 but considering its application to an infringement case,
there can be no link if the section of the public aware of the reputation of the claimant’s mark
would simply never encounter the goods or services actually sold or provided by the defendant.
That makes sense because otherwise one would be considering an entirely hypothetical and
artificial scenario.
191 The claimant submitted that the defendant’s emphasis on the narrow nature of the claimant’s
reputation was misplaced because art.9(1)(c) infringement covers cases of dissimilar goods. That
is not an answer to this point. Goods can be dissimilar but can be goods which someone aware
of the claimant’s reputation will *1008 still encounter. To take the famous Claeryn/Klarien
example, drinkers of gin will still buy household cleaning products.
192 Turning to the facts of this case, the consumers who are aware of the claimant’s reputation
will often be older than the “college girls” to whom the defendant’s PINK goods are aimed.
Nevertheless an example of a realistic average consumer is a woman in their late 20s/early 30s
who might wear one of the claimant’s shirts during the day and a casual garment from the
defendant in the evening or at the weekend. Thus female consumers who are aware of the
claimant’s reputation may well enter one of the defendant’s PINK stores to buy goods either for
themselves or as gifts for other people. Moreover while I doubt a large number of middle aged
men enter one of the defendant’s PINK stores unaccompanied, I am sure that some will do in
order to buy gifts, perhaps for a daughter or a niece. In my judgment average consumers who
are familiar with the claimant’s reputation will encounter the defendant’s swing tags and labels
and will enter the defendant’s premises with a view to buying the defendant’s goods complained
of in this action.
193 An average consumer presented with the swing tags or labels inside one of the defendant’s
stores will appreciate from the context that it relates in some way to VICTORIA’S SECRET. That
arises both from the small words VICTORIA’S SECRET presented under PINK and is reinforced
by the overall retail context. However crucially what they will see is a sign very similar to and
reminiscent of the claimant’s sign. It does not include the full name Thomas Pink nor the Jermyn
Street address, but the key element is the word PINK itself. It is even presented in a format which
is reminiscent of the claimant’s PINK outlined format although that is not critical. The defendant’s
goods include some goods which are the same as the kinds of goods for which the CTM has a
reputation in the mind of this average consumer (e.g. casual tops and socks). The rest are similar
or very similar. I bear in mind that the CTM has a normal degree of distinctiveness and that the
claimant has a well established reputation for shirts and a reputation sufficient to satisfy
art.9(1)(c) for the other goods mentioned above.
194 The defendant submitted the existence of a link to the CTM was untenable in this context.
The defendant did not say why but I believe the argument was concerned with the nature of the
context I have discussed already and the possible differences between the consumers aware of
the claimant’s reputation and those who would buy the defendant’s goods. I have taken these
points into account. Despite them in my judgment the relevant average consumer will perceive a
link between the CTM and the defendant’s sign PINK as it is used on the swing tags and labels
on all of the defendant’s goods, even when they appear in the context of the defendant’s stores.
195 The other scenario in which I found no likelihood of confusion under art.9(1)(b) was the
Facebook page. I reject the claimant’s case under art.9(1)(c) here. I doubt very many consumers
aware of the claimant’s reputation would look at the defendant’s Facebook site at all but
assuming some did, I find they would not make the link between the CTM and the sign
 Page 41

VICTORIA’S SECRET PINK in lock up format as it is presented on Facebook. Here PINK is not
presented independently of VICTORIA’S SECRET either grammatically or by using differences in
format. *1009

Due cause

196 To infringe under s.10(3) / art.9(1)(c) the acts complained of must be without due cause.
Based on the CJEU in Interflora Inc v Marks and Spencer Plc (C-323/09) [2012] E.T.M.R. 1;
[2012] F.S.R. 3 the claimant submitted that normally due cause only applies to excuse acts which
otherwise satisfy art.9(1)(c) if they do not offer a mere imitation, do not cause dilution or
tarnishment and do not adversely affect the functions of the trade mark. The defendant drew an
analogy with the more recent authority of Leidseplein Beheer BV v Red Bull GmbH (C-65/12)
[2014] E.T.M.R. 24 . The facts of Leidseplein were that the defendant had used BULLDOG for 40
years in Benelux for hotel, restaurant and café services and had started using the sign
complained of eight years before the claimant filed for protection for its mark RED BULL
KRATING-DAENG for energy drinks. The defendant later sought to extend its use of BULLDOG
into energy drinks. The CJEU held that due cause can be established if it is demonstrated that
the sign was being used before the mark of the claimant was filed and that use of that sign in
relation to the identical product was in good faith. Three factors were identified by the CJEU as
relevant to good faith (at [60]). They are essentially:

i) how the defendant’s sign has been accepted by the public and what its reputation is;

ii) the degree of proximity between the relevant goods of each party; and

iii) the economic and commercial significance of the defendant’s use complained of.

197 In this case the defendant argues that Victoria’s Secret has used PINK in the United States
for many years in essentially the same way it now seeks to do in the United Kingdom and
European Union. It has due cause to use PINK in this way here because this activity is simply a
natural extension of its substantial activities in the United States. It is not seeking to take
advantage of Thomas Pink’s rights. The goods sold by the defendant are distinct from the goods
sold by the claimant. Moreover although there was a complaint by Thomas Pink in the United
States some years ago there has now been co-existence there for a number of years and no
evidence of confusion in the United States exists. The defendant also refers to the websites used
by its affiliates in the United States which were in fact accessible from the United Kingdom and
European Union and led to sales here and to its catalogues which also led to sales here in earlier
years. Whether the websites are to be regarded as targeted at the United Kingdom or not both
they and the catalogues did in fact play a part in making consumers here aware both of
VICTORIA’S SECRET itself and PINK in particular.
198 My findings on these points are as follows. The corporate group of which the defendant is a
part has used PINK in the United States for many years in essentially the same way it now seeks
to do in the United Kingdom and European Union. From the defendant’s point of view the activity
complained of in this case is a natural extension of its substantial activities in the United States. It
is not deliberately seeking to take advantage of Thomas Pink’s reputation but the defendant did
not pause to consider what the claimant’s European or UK trade mark rights actually were before
it launched here. It simply went ahead.
199 Moreover many of the goods actually sold by the defendant are not different from the goods
sold by the claimant. Leaving aside the proper scope of registered *1010 trade marks and
looking at the actual products on sale, although the primary focus of the claimant is shirts and the
primary focus of the defendant is lingerie, both parties also sell casual clothing on a substantial
scale. It is not an incidental line for either party.
200 The evidence does not establish that catalogues from the United States and available here
used PINK to any significant extent. As for the websites, prior to the launch by the defendant
here, they were not targeted at the United Kingdom. The defendant is also right that although
 Page 42

there was a dispute at one stage in the United States, a position of co-existence has been
reached. There is a covenant by the claimant not to sue in the United States but it is limited to
that territory. It does not confer a right to co-existence here. There is no evidence of confusion in
the United States.
201 There are a number of distinctions between this case and Leidseplein [2014] E.T.M.R. 24 .
First, a key difference between Leidseplein and this case is that the prior acts in that case were
undertaken within the Community. Trade mark rights are territorial and the fact that the acts the
defendant relies on took place elsewhere is fatal to the defendant’s case. The defendant’s use
prior to 2012 has not been accepted by any section of the public with which the CTM is
concerned. Secondly, another key distinction is that the start of the use relied on by the
defendant anywhere does not predate the CTM. The CTM was filed in 2004 while the earliest
Victoria’s Secret started using PINK in the United States was the same year. The claimant’s
trading began well before 2004. Moreover thirdly, the fact that there is co-existence in the United
States and a lack of confusion evidence does not take matters very far. The legal context in the
United States and the parties’ respective legal rights are not the same as the legal context and
the parties’ rights here in the European Union. Fourthly, some of the acts of the defendant
infringe the CTM under art.9(1)(b) . Those infringing acts are an integral part of the same overall
activity by the defendant. The defendant has no due cause for committing that sort of trade mark
infringement. Fifthly the goods and services offered by the defendant are and always have been
in close proximity to the claimant’s goods. This is not a case like Leidseplein in which a mark
used for one kind of product without difficulty is now being used for different products. Sixthly, the
economic and commercial significance of the defendant’s activity is substantial. This overlaps
with detriment (below). The defendant is a major organisation and the acts complained of are
being carried out on a large scale and will in future be carried out on an even larger scale. The
defendant plans to open more PINK stores in the United Kingdom in the next year or so and
intends to open PINK stores in the rest of the European Union in future.
202 The claimant also submitted that the defendant’s use here cannot be in good faith. In my
judgment the position is as follows. As regards the acts of the defendant and its affiliates in the
United States, there is no basis on which to come to a conclusion other than one that they have
at all times been acting in good faith. As regards the move into Europe, the position of the
defendant and its affiliates is that they have a dispute with the claimant about the nature and
extent of its rights here. The dispute is bona fide in the sense that the defendant’s position in
these proceedings is not a sham, only adopted for the sake of argument. It did not in fact conduct
a trade mark search before entering the market but based on its view, that would not have made
any difference. The defendant’s position taken before this court is a reflection of its genuinely
held view. However the defendant is wrong *1011 about a number of important aspects of the
claimant’s rights in the United Kingdom and European Union. The nature and extent of the
claimant’s trade mark rights are much more substantial than the defendant believed. The
claimant’s business is not purely limited to shirts. A registration for clothing under the CTM is fair.
Important aspects of the defendant’s manner of trading lead to a likelihood of confusion and
infringements under art.9(1)(b) CTMR / s.10(2) . I find that the premise on which the defendant
decided to enter the European market was adopted in good faith but it was wrong. A reasonable
business knowing what the defendant knows now would not continue to act in this way.
203 I find that the defendant does not have due cause to act in a manner which would otherwise
infringe the claimant’s trade mark rights under art.9(1)(c) / s.10(3) .

Detrimental to distinctive character or repute

204 The defendant submitted that detriment to distinctive character or repute could only be
shown if there was some evidence of a change in economic behaviour of the average consumer
as a result of the activity complained of. The claimant pointed out that Environmental
Manufacturing LLP v Office for Harmonisation in the Internal Market (Trade Marks and Designs)
(OHIM) (WOLF HEAD) (C-383/12 P), 14 November 2013, unreported , in which this point was
discussed at [34]–[43] did not require direct proof. A deduction would be sufficient as long as it
was not simply something deduced from subjective elements such as consumers’ perceptions (at
[37]) or was the result of mere suppositions (at [43]). The court there emphasised that in Intel
[2009] R.P.C. 15 the court had required a higher standard of proof. What is required is a serious
risk of detriment (at [42]).
 Page 43

205 The link to the CTM caused by the defendant’s use of PINK in this case will cause a
detriment to the repute of the claimant’s mark. I will not use the term tarnishment since it is
unduly pejorative. The defendant’s overall business is a legitimate one. Nevertheless it is one
which has been associated with some controversy, no doubt because “sexy sells”. Examples
were in the evidence of goods which had to be withdrawn by the defendant after complaints. 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.
206 This is bound to cause a change in the economic behaviour of the claimant’s customers.
They will not see the CTM in the same way as before. The claimant’s trade mark will be
associated with a mass market offering, reducing its luxurious reputation. There is every risk that
this will lead consumers not to buy products from the claimant when they otherwise would have
done.
207 Furthermore the link to the CTM will inevitably cause a detriment to the distinctive character
of the claimant’s mark. The defendant is not using PINK in a descriptive sense, it is using PINK
as an indication of trade origin for its articles of clothing and other articles. Over time, if it is not
stopped, it is bound to cause the claimant’s clothing trade mark to begin to lose its ability to act
as a designation of the claimant as the origin of its goods. The defendant is backed by a huge
business and is in a position to saturate the market with its conflicting origin message in a very
short space of time. A key element in the claimant’s mark, the word PINK, will not serve as an
exclusive designation of the claimant. The public will think that the claimant’s trade mark refers to
Victoria’s Secret. There is a real *1012 risk that this will lead to a change in economic behaviour.
For example 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.
208 I find that the case brought under s.9(1)(c) based on the CTM is proved.

Section 10(3) and the UK TM

209 The defendant submitted that the claimant could not succeed on this extended kind of
infringement in relation to the UK TM under s.10(3) because the UK TM had not been used in a
form identical to its form as registered and therefore could not have acquired the relevant
reputation. That does not preclude a case under s.10(3) / art.9(1)(c) because, for the reasons
already considered in relation to acquired distinctiveness above, the proprietor is entitled to rely
on use in a form which did not alter the distinctive character of the mark in order to generate the
relevant reputation. I find that the UK TM has the relevant reputation on the same basis as the
CTM.
210 The similarities and differences between the outlined form of PINK in the UK TM and PINK
on the defendant’s swing tags (etc.) are very slightly different from the detailed similarities and
differences relating to the CTM but those details do not matter for this analysis. I reach the same
conclusion under s.10(3) as I have reached under art.9(1)(c) .

Acquiescence?

211 Although the defendant pleaded an acquiescence defence under art.54 CTMR /s.48(1)(a),
this defence cannot succeed. It is based on two trade marks for VICTORIA’S SECRET PINK in
Class 25 (and other classes). One is a CTM 005993043 registered with effect from March 2008.
It is a word mark. The other is International Registration WO 0000000 925667 registered with
effect from 18 April 2007. It is a device mark with the words VICTORIA’S SECRET above the
word PINK all in plain text. Mr Waters provided evidence about sales into the United Kingdom
and European Union but I am not satisfied that this related to any use of VICTORIA’S SECRET
PINK.
212 The defendant’s usage in stores here since 2012 is too recent to give a five year period of
acquiescence and in any case that use has been of PINK alone or at best, PINK with the words
VICTORIA’S SECRET in small writing underneath. Neither of these amount to use of
VICTORIA’S SECRET PINK.
213 The only usage which could be said to be use of the word mark is on Facebook. Even if,
 Page 44

contrary to my findings, it was targeted to the United Kingdom/European Union on or after 2012,
it cannot found an acquiescence defence. It has not been carried out for five years. One other
possibility is the brass plate at Lancashire court but it has not been in place for five years.
214 Finally, I find that the claimant only learned of the defendant’s use in the United Kingdom
and European Union in 2012.

Passing off

215 In the light of my conclusions I do not need to consider the passing off case and I will not do
so. If the claimant’s trade mark case had not succeeded, it is hard to see how the passing off
case could have succeeded. *1013

Overall conclusion

216 I find for claimant. The defendant’s use in the European Union of PINK both on its goods and
as the name of its stores is an infringement of the claimant’s registered trade mark rights.

Postscript

217 Following handing down of the judgment in draft form the parties proposed various
typographical and other corrections, which have been taken into account. The defendant also
submitted that the second sentence of [114] above is not an accurate summary of its position at
trial and referred to its Opening Skeleton para.109(b) and its Re-Amended Defence para.61.
Neither reference articulates with any specificity a reason why, if the UK TM has acquired a
distinctive character, it had not acquired that distinctive character for all the goods and services
for which it is registered.

Annex 1

The specification of the CTM as originally granted and as marked up by the claimant.

Class Description of CTM goods

3 Cosmetics, perfumery, toiletries; soaps; shampoos; preparations for the care of

the hair, skin and body

14 Precious metals and their alloys and goods Tie pins and tie clips in precious
metals or coated therewith, not included in other classes ; jewellery, precious
stones; horological and chronometric instruments; cufflinks

18 Leather and imitations of leather, and goodsBillfolds, credit card cases,

containers, wallets, and wraps made of leather and imitations of leatherthese
materials and not included in other classes; animal skins, hides; trunks and
travelling bags; umbrellas, parasols and walking sticks; whips, harness and
saddlery

25 Clothing, footwear, headgear

26 Collar stays, collar stiffeners and collar supports; buttons; badges

35 The bringing together, for the benefit of others, of a variety of goods including
clothing, perfumery, toiletries, cosmetics, jewellery, cufflinks, watches, goods
 Page 45

Class Description of CTM goods

billfolds, credit card cases, containers, wallets, and wraps of leather and
imitation leather, umbrellas, articles of clothing, headgear and footwear in a
retail store or retail department store, by mail order, by means of
telecommunications or from an Internet website specialising in the marketing of
clothing, perfumery, toiletries, cosmetics, jewellery, cufflinks, watches, goods
billfolds, credit card cases, containers, wallets, and wraps of leather and
imitation leather, umbrellas, articles of clothing, headgear and footwear;
consultancy, information and advice in relation to all the aforesaid *1014

Annex 2

Four kinds of presentation of the sign by the defendant

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Annex 3 – specification of goods and services for UK Trade Mark 2 565 078

Class 14 Cufflinks; tie pins and tie clips; studs, collar bones; jewellery, leather cufflink
boxes, leather collarbone pouches, leather stud boxes.
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Class 18 Billfolds, credit card cases, wallets and umbrellas, leather wraps. *1015

Class 25 Men’s and ladies’ shirts, polo shirts, rollneck tops, ties, bowties, blazers, boxer
shorts, socks, scarves, cravats, blouses, knitwear, dresses, wraps, nightwear, footwear,
cummerbunds, braces, beachwear, hats and gloves.

Class 35 Retail services, mail order retail services, electronic shopping retail services
connected with the sale of clothing, headgear, footwear, jewellery, watches, cufflinks, tie
pins and tie clips, studs, goods of leather and imitation leather, umbrellas, fashion
accessories, non-medicated toilet preparations, eyewear; the bringing together for the
benefit of others of a variety of clothing, headgear, footwear, jewellery, watches, cufflinks,
tie pins and tie clips, studs, goods of leather and imitation leather, umbrellas, fashion
accessories, non-medicated toilet preparations, eyewear; enabling customers to
conveniently view and purchase such goods; the provision of information and advice in
relation to retail services; provision of advice and assistance in the selection of goods.

Annex 4

The table is confidential and has been removed from the public copy of the judgment. *1016

1. This decision is understood to be the subject of a pending appeal to the Court of Appeal.

2. Being the provisions implemented by ss.10(2) and 10(3) of the Trade Marks Act 1994.

3. Leidseplein Beheer BV v Red Bull GmbH (C-65/12) [2014] E.T.M.R. 24 , CJEU.

© 2016 Sweet & Maxwell