Brand Watch - UK fashion "in the Pnk" following UK High Court decision against Victoria's Secret

19 December 2014

Zain Ali and Tobias Hawksley Beesley

New tool launched to forecast trade mark and design demand in the EU

The forecasting tool, touted as an ‘advanced IP prediction system’, has been developed within the framework of the EU Cooperation Fund and the Observatory on Infringements of IP Rights, thanks to the collaboration of OHIM, the Polytechnic University of Madrid and IP offices in Denmark, Spain, Hungary, Poland, Portugal and the UK. It will support strategic planning and optimise the allocation of resources, in order to help 17 participating IP offices across the European Trade Mark and Design Network better predict the levels of trade mark and design filings.

UK fashion “in the Pink” following UK High Court decision against Victoria's Secret
Thomas Pink recently succeeded in their trade mark claim against the American lingerie retailer Victoria’s Secret. It was ruled that Victoria’s Secret’s sub brand of clothing for younger women, “Pink”, was an infringement of Thomas Pink’s trade mark, “PINK”. Thomas Pink’s reputation of being a traditional luxury shirt-maker being confused with a line of “sexy” mass market Victoria’s Secret clothing was a key factor in the Judge’s decision. Although Thomas Pink and Victoria’s Secret are both clothing retailers, one provides mostly business clothing targeted at the older professional, whilst the other provides mostly female undergarments and clothing for women in their teens and twenties.
Disclosure of Suppliers causing irreparable harm in UK case (Wilko Retail Ltd v Buyology Ltd)

The UK Retailer Buyology Ltd came to a settlement with Wilko Retail Ltd regarding the sale by Buyology of goods that infringed Wilko’s trade marks and constituted passing off. However, Wilko then went on to seek disclosure of a list of those who had supplied Buyology with the infringing goods. It was ruled that the disclosure of the supplier list was a separate issue to the trade mark infringement case and so Wilko did have a separate claim for this despite settling the original case. However, the Judge also stated that Buyology had behaved in an exemplary manner with their defence and the infringement had occurred unknowingly. Forcing them to disclose the names of their suppliers would cause them irreparable harm to their relationship with these suppliers. This shows the value of good behaviour during the litigation process.

Goods in Transit (EU) Part 2

In the last edition of Brand Watch2, the adoption of the Gallo-Rapkay amendments in February 2014, on goods in transit was considered. These discussions included plans to reform EU trade mark law. In July 2014, negotiations were started by the Italian presidency of the Council, at the behest of the Committee of Permanent Representatives of the 28 EU Member States (COREPER), with the European Parliament to implement the reforms. However, coming to an agreement has proved difficult with a lack of consensus as to reforms regarding the treatment of goods in transit, amongst others. The Gallo-Rapkay amendments already constituted a step forward in giving customs the ability to confiscate imitation products, yet the European Council is conscious of the need to strike a balance between implementing tougher methods of dealing with counterfeit goods and imposing further burdens on the flow of trade.

This article is part of BrandWrites - December 2014