EUIPO declares Banksy’s ‘Flower Thrower’ trade mark invalid
The famous graffiti artist’s trade mark was cancelled on the grounds that it was filed in bad faith.
The claimant, Thomas Pink Limited, began trading in London in 1984. The core of its business is and has always been the sale of shirts, which are worn by professional people.
Thomas Pink has grown and diversified and today the business involves selling goods other than shirts including either items of clothing and accessories. All the goods are sold under or by reference to Thomas Pink and PINK. The word PINK is used in a distinctive font style.The claimant was the registered proprietor of two trade mark registrations.
The defendant in this case is part of a group which sells the famous Victoria’s Secret lingerie. In 2004, the Victoria’s Secret group launched a sub brand in the USA called PINK which was a diversification from lingerie into clothing at large. It is aimed at the college girl. In 2012 Victoria’s Secret opened stores branding PINK on Bond Street in London.
The claimant contended that the acts of the defendant amounted to infringement of its registered trade marks and passing off and that prior to 2012 the defendant had no or no relevant retail presence in Europe but that the defendant had since commenced is using PINK as a primary sign on the garments and stores.
The defendant denied these allegations. The defendant submitted that the claimant’s legal rights had to be examined with care; both its CTM and UK trade marks are device marks and that the specification of goods and services, for which the CTM is registered, were claimed to be far too broad.
Mr Justice Birss found that the use of PINK emblazoned on the defendant’s items of clothing did give rise to a likelihood of confusion on the part of the consumer; the goods being identical and the sign being very similar to the mark.
Further Mr Justice Birss found that the defendant’s shop facia on its free standing stores gave rise to a likelihood of confusion and the retail services were held to be identical.
Mr Justice Birss stated that the defendant was not using PINK in a descriptive sense, it was using PINK as an indication of trade origin for its articles of clothing and other articles. There was therefore a real risk that there would be a change in economic behaviour to the detriment of the claimant.
Overall, the defendant’s use, in the EU of PINK, both on its goods and in relation to the name of it’s stores was held to be an infringement of the claimant’s registered trade marks.
It is always worth conducting a trade mark clearance search before entering a new territory to establish the risk, if any, of infringing the existing registered rights of a third party.
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