Trademark Blog

The Pink Trademark Dispute-Not Just a Color Anymore

Posted by Brandon Selinsky on Jan 17, 2017 3:09:42 PM
Brandon Selinsky

Trademark Dispute

Who would’ve imagined that pink would become a disputed international trademark dispute?  The international trademark dispute over “Pink” revolves around a clothing trademark.  The two companies fighting over the trademark rights for this word “Pink” are L Brands, Inc. which owns Victoria’s Secret, and Thomas Pink, an upscale British dress-shirt brand.

Company Background

Thomas Pink is a well-known European luxury goods brand.  The company has been selling men’s designer shirt since 1986, and recently began offering women’s shirts as well.  L Brands Inc.’s popular lingerie chain, Victoria’s Secret, is a global brand known for its intimate apparel lingerie and its yearly runway fashion show.

The “Pink” Dispute

In 2002, Victoria’s Secret started its “Pink” line of clothing focused on college-age women.  In 2012, Victoria’s Secret opened stores in London that began selling the “Pink” line.  Thomas Pink was not happy and waged a “Pink War,” as Victoria’s Secret called, it and filed a trademark dispute lawsuit stating that Victoria’s Secret Pink line was infringing on his rights, tarnishing his company’s image, and confusing customers.

Little Guy vs. Big Guy

Most people have heard of Victoria’s Secret Pink line, while Thomas Pink stores are less well-known throughout the world.  Fortunately for Thomas Pink, being more well-known than another company globally does not outweigh the fact that Thomas Pink owns the “Thomas Pink” trademark in the U.K.  In addition to this, public policy becomes a large factor in determining cases like these.

As trademark law is “designed to fulfill the public policy objective of consumer protection, by preventing the public from being misled as to the origin or quality of a product or service.”  Thus, the judge in this case analyzed whether consumers in the U.K. would become confused by the use of “Pink” by two separate stores.  To the surprise of some commentators, he found they would be, stating “[c]onsumers are likely to enter one of the [Thomas Pink] claimant’s shops looking for lingerie and be surprised and disappointed when they find they have made a mistake”.  This likelihood of confusion, combined with Thomas Pink’s trademark ownership and use in the U.K., was enough to persuade the judge to rule in favor of the company and against Victoria’s Secret.

Lessons Learned…the Hard Way

What could Victoria’s Secret have done to protect the trademark?  When it comes to international trademark law, things can get very tricky as each country has their own take on what a trademark is and how it should be protected.  However, the Madrid Protocol is one of two treaties that deal with international registration of trademarks.  The Madrid Protocol seeks to provide a cost-effective and efficient way for trademark holders to get trademark rights in multiple countries by only filing one application.  However, it is important to note that this just allows a business or individual to register the mark, though it is still up to each country to determine if the trademark can be protectable.  Once protectable, that trademark is registered and protected as if the individual or business had filed an application in the United States.

Victoria’s Secret will most likely appeal the decision.  If they lose, they may not be able to open anymore European Pink stores.  However, cases like this one illuminate the idea that large companies need to start planning ahead and registering their trademarks abroad before they are even sure that they will be expanding into European or Asian markets. Proactive steps to protect a brand would’ve saved Victoria’s Secret a lot of money, time and stress as they wait to appeal this decision that could negatively affect their sales in the European and U.K. market.

Protect Your Trademarks

If your company is looking to register trademarks internationally or if you want to learn more about this case and the Madrid Protocol, contact the lawyers at WSM Law today.

Topics: Trademark Law

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