Two retail giants, Victoria’s Secret (L Brands) and Thomas Pink (LVMH Moet Hennessy) have been fighting over the exclusive right to use the “PINK” trademark in the United States and internationally after numerous lawsuits and countersuits have been filed on both sides of the Atlantic.
Victoria’s Secret, which began as an exclusive lingerie-only brand, launched its extremely successfully “Pink” line in 2002. The “Pink” line offers both lingerie and loungewear, and many Victoria’s Secret stores have been re-designed to offer additional, separate entrances to the “Pink” section of the stores where its Victoria’s Secret “Pink” mark is clearly emblazoned all over its walls and merchandise.
Thomas Pink has been selling designer men’s shirts since 1986 and has also expanded into the women’s market. Thomas Pink is named after an 18th-century London tailor, but the brand is owned by a French luxury-goods conglomerate.
While some may argue that Victoria’s Secret is the arguably more recognizable brand, Thomas Pink seems to have the upper hand in what has been deemed the “global pink war.” Thomas Pink fired the first salvo in May 2013 when it sued Victoria’s Secret in England and successfully secured injunctive relief across Europe. In response, Victoria’s Secret sued Thomas Pink in the United States in July 2013, seeking a declaratory judgment that it was not infringing.
Victoria’s Secret then sought to amend its complaint, but Thomas Pink opposed the motion to amend, arguing that the request should be denied and the case should be dismissed with prejudice. As a result, Victoria’s Secret voluntarily dismissed the initial filing and brought a new suit against Thomas Pink. In its plea, Victoria’s Secret claimed that despite the two brands’ peaceful coexistence for many years, Thomas Pink’s recent oppositions against its trademark applications to register “PINK” in Europe and other countries such as Argentina and South Korea exhibited “cross-border aggressiveness” and posed an “imminent risk” to its operations.
Now in the latest battle, Thomas Pink has won another ruling against Victoria’s Secret. In the United Kingdom suit, a London judge found for the designer shirt company, declaring that there would indeed be consumer confusion and “detriment to the repute” of the Thomas Pink brand. Although Thomas Pink had only registered the trademark in logo form, the court held that the mark had acquired distinctiveness among consumers because it had been in existence and continuous use since 1984.
As such, due to this recent ruling, Victoria’s Secret could be forced to stop selling its “PINK” merchandise in Europe and in other markets that Thomas Pink pursues similar enforcement.
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Based in Dallas, Texas, Klemchuk Kubasta LLP is an IP boutique law firm that offers comprehensive intellectual property legal services. KK LLP represents clients in the Northern and Eastern Districts of Texas, as well as throughout the country. Additional information about the firm and its attorneys may be found at www.klemchuk.com.