With its connotations of femininity and socialism, the colour pink seems an unlikely banner for a global war between capitalist corporate giants.
And yet, following a judge’s new ruling in the Federal Court of Canada, a Canadian front has opened up in the “global pink war,” as it is called in court records, between British luxury men’s shirtmaker Thomas Pink and American lingerie colossus Victoria’s Secret, which markets to younger women under the brand Victoria’s Secret Pink.
At issue is who can use the word “pink” on their dress shirts, underwear and ads.
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“While there has been apparent peaceful co-existence in Canada for five or more years, given the eruption of litigation warfare in the United Kingdom, there is no guarantee of continued peaceful co-existence in Canada,” wrote Mr. Justice Roger T. Hughes of Federal Court. His ruling gives the go-ahead to a Canadian lawsuit brought by Victoria’s Secret, seeking a declaration that their trademark is not in conflict with Thomas Pink’s. This is just one of many legal battles, all being fought at the same time.
World War Pink broke out last May in England, not long after Victoria’s Secret opened a four-storey flagship shop on London’s Bond Street, followed by outlets in Manchester, Sheffield and Leeds.
No doubt mindful of the marketing power of the company whose lingerie models have become stars in their own right, Thomas Pink filed an action in the U.K. Patents County Court, seeking an injunction against the Victoria’s Secret PINK label in the U.K. and other European Union countries. It claimed customers were confused. A trial is slated for June.
Jamie McCarthy / Getty Images for Victoria's Secret PINKVictoria’s Secret markets to younger women under the brand Victoria’s Secret Pink
Anticipating similar suits in North America, Victoria’s Secret responded last July with a lawsuit in the U.S. that sought a legal declaration of “the rights of the parties, allowing them to continue the peaceful coexistence that has been in place for many years.”
It also filed this suit in Canada, in which Judge Hughes has concluded Victoria’s Secret has “a ‘reasonable apprehension’ that their Canadian commercial activities may be challenged by Thomas Pink by litigation or otherwise, under the Trade-Marks Act.”
As a result, he allowed the case to proceed, with Thomas Pink expected to file a defence, or counterclaim, within 30 days.
Nicholas Roberts / AFP / Getty ImagesA Thomas Pink store in New York's financial district. Thomas Pink filed an action in the U.K. Patents County Court, seeking an injunction against the Victoria’s Secret PINK label in the U.K. and other European Union countries
Thomas Pink is a shirtmaker incorporated in Britain in 1986 by three Irish brothers, and named for an 18th century tailor who made hunting coats, hence the logo of a fox. It has a flagship shop on Jermyn Street, the menswear mecca in London, and sells in Canada in high end stores like Holt Renfrew. It is owned by the luxury brand conglomerate LVMH, formerly Moët Hennessy and Louis Vuitton, which also owns exclusive brands in beverages (Ardbeg, Dom Pérignon, Veuve Clicquot), fashion (Dior, Fendi, Givenchy) and jewelry (Bulgari, De Beers, TAG Heuer.)
Victoria’s Secret PINK was launched in 2001 and has become, according to court records, a “dominant lifestyle brand targeting college girls and celebrating campus life,” with more than $1.5-billion in sales each year. It has registered trademarks for slogans such as “pink is life,” “forever pink,” “I only sleep in pink,” and “Give a little pink.” A “Pink Nation” smartphone app, for example, has nearly 6-million subscribers, according to court documents, which also indicate it has 1-million fans and 12-million “likes” on Facebook,” as well as 100 campus representatives.
It is a valuable brand. In Canada alone, it sold more than $125-million between 2009 and 2013, and has more recently started selling women’s shirts, which adds to the tension, though it is not the nub of the legal matter.
Prior to these legal actions, the uneasy peace between the companies was unbothered by much correspondence. Their lawyers discussed the potential conflicts in 2005, but there was nothing else until the British suit last May. In the meantime, both sides appear to have been girding for open war.
Without filing defences, Thomas Pink fought to have the American and Canadian suits tossed out. Then just last week, Victoria’s Secret withdrew the American one and filed a new case, alleging Thomas Pink “has expanded its cross-border aggressions against Victoria’s Secret into a global ‘PINK War,’ by threatening to oppose and opposing VS’ applications to register its trademarks in foreign countries,” especially in the lucrative markets of Europe, South America and Asia.
In various countries, Thomas Pink has opposed, for example, trademarks for various designs of the word “PINK,” including the word by itself in typical collegiate font, and “LOVE PINK” and even “PINK YOGA.”
A Canadian trademark application for the word “PINK,” by itself, in the stylized font, was filed by Victoria’s Secret last summer. It claims to have used the brand in Canada since 2009.
Thomas Pink also owns Canadian trademarks using the word “pink” by itself.
Lawyers for both sides did not respond to requests for comment on Sunday.
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