August 5, 2014
L Brands lost a battle in the “global pink war” when a British court ruled that the Columbus-based retailer’s Victoria’s Secret Pink brand has infringed on the trademark of Thomas Pink, an upscale British dress-shirt brand.
Thomas Pink, owned by the luxury-goods conglomerate LVMH Moet Hennessy, takes its name from an 18th-century London tailor. The company has been selling designer men’s shirts since 1986 and, more recently, women’s shirts.
L Brands’ lingerie chain Victoria’s Secret launched its Pink line of lingerie and loungewear aimed at college-age women in 2002. L Brands opened Victoria’s Secret stores in London two years ago, both of which offer separate entrances to Pink sections of the stores.
“Consumers 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,” Judge Colin Birss wrote in his opinion, filed last week.
L Brands officials declined to comment on the ruling, but an appeal is expected.
The judgment in the United Kingdom stands in contrast to a settlement reached in May in U.S. District Court in Columbus, in which Thomas Pink agreed not to pursue any further trademark-infringement cases against Victoria’s Secret Pink in the United States.
L Brands had filed suit in the United States last year in response to the Thomas Pink suit in Europe, but withdrew that suit after Thomas Pink argued that the case should be dismissed.
Then, in January, L Brands filed another suit in federal court, saying that the British company had expanded its fight into a “global pink war” by opposing the U.S. company’s applications to register Pink as a trademark in Europe and elsewhere.
The recent decision in London won’t have any effect on the U.S. settlement but may have implications overseas, particularly in Europe, said Guy Rub, who teaches copyright law, contracts, and law and economics at Ohio State University's Moritz College of Law.
“Once you have a settlement, it’s binding, it’s a contract, it’s done. Too late to change your mind,” Rub said. “The ruling in Britain is not enough to overturn that (in the U.S).
“But every market is its own case. Different countries have different rules — except for Europe. Europe is tricky.”
Because Thomas Pink has registered under the European Community’s trademark rules, if the British company prevails on appeal, “The decision might be considered to cover the entire European market,” Rub said.
“L Brands won’t be able to open stores with the Pink name in Europe, so that would be a big loss.”