05 December 2014
Avoiding a courtroom colour clash
Recently, luxury gentlemen’s outfitter Thomas Pink rolled up its very elegant sleeves for a courtroom battle with lingerie chain Victoria’s Secret.
It successfully sued the underwear store – which bills itself as having “the world’s sexiest lingerie” – for using the trademarked term “PINK” in its new range of fragrances, toiletries and clothing.
The gentlemen’s outfitter claimed that Victoria’s Secret’s association with the colour was tarnishing its brand and well-established reputation. It had previously registered PINK as a community and UK trademark.
In response, Victoria’s Secret had claimed that its own name and positioning were strong enough so that customers would see the word Pink in the context of their famous brand and it was wrong to suggest this would muddle the masses.
In the High Court however, Mr Justice Birss disagreed, finding that Thomas Pink’s luxurious reputation could be risked by the lingerie store’s “sexy, mass market appeal”. He said there was every risk Victoria’s Secret’s use of the trademark would lead consumers not to buy products from the claimant that they may have done otherwise.
The battle raised eyebrows because it arrived at a different outcome to the one earlier this year involving Cadbury’s and Nestlé, when the former was finally refused permission in its latest attempt to trademark its iconic colour purple. It had wanted to stop other chocolate companies from using the colour in their own sweet wrappers.
Cadbury’s had originally tried to trademark the purple shade in 2004, but failed because Nestlé opposed it, and since then the two confectionery giants have been involved in numerous court cases.
In April, the Supreme Court upheld a 2013 decision by the Court of Appeal, which ruled that Cadbury’s formulation did not comply with the requirements for trademark registration and it was attempting to register “multiple signs” involving the colour.
“We often see businesses investing considerable time and money in developing their brands, without thinking enough about whether they can be legally protected at a later date,” he said.
“Unfortunately, it is often only years later – as shown by the Cadbury’s case – that true brand value and potential is realised.
“In an area where case law changes rapidly, it’s important to regularly revisit legal advice to understand what can and cannot be protected and to keep an eye on the market to ensure challengers can be headed off very early.”
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