Moseley v. V Secret Catalogue, Inc.,
In 1998 a weekly publication newspaper distributed to residents at Fort Knox, Kentucky contained an ad for the grand opening of a store called Victor's Secret that was owned by Victor and Cathy Moseley which sold lingerie and adult novelties and gifts. An army colonel who saw the ad was offended by what he perceived to be an attempt to use a reputable company's trademark to sell "unwholesome, tawdry merchandise" and contacted Victoria's Secret, which then requested the Moseleys to immediately discontinue the use of the name Victor's Secret and "any variations thereof." In response the Moseleys changed the name of the store to Victor's Little Secret.
This did not satisfy Victoria Secret where they then went on to filed suit in the District Court for the Western District of Kentucky alleging, among other claims, a violation of the FTDA.
The court prohibited the Moseleys from using the Victor's Little Secret name because it tarnished the Victoria's Secret trademark.
Following the remand of the case to district court, Congress in 2006 passed the FTDRA, which essentially overturned the Supreme Court's Moseley decision. The district court applied the new law and granted summary judgment in favor of Victoria's Secret and issued an injunction against the use of the name Victor's Little Secret.
In 1998 a weekly publication newspaper distributed to residents at Fort Knox, Kentucky contained an ad for the grand opening of a store called Victor's Secret that was owned by Victor and Cathy Moseley which sold lingerie and adult novelties and gifts. An army colonel who saw the ad was offended by what he perceived to be an attempt to use a reputable company's trademark to sell "unwholesome, tawdry merchandise" and contacted Victoria's Secret, which then requested the Moseleys to immediately discontinue the use of the name Victor's Secret and "any variations thereof." In response the Moseleys changed the name of the store to Victor's Little Secret.
This did not satisfy Victoria Secret where they then went on to filed suit in the District Court for the Western District of Kentucky alleging, among other claims, a violation of the FTDA.
The court prohibited the Moseleys from using the Victor's Little Secret name because it tarnished the Victoria's Secret trademark.
Following the remand of the case to district court, Congress in 2006 passed the FTDRA, which essentially overturned the Supreme Court's Moseley decision. The district court applied the new law and granted summary judgment in favor of Victoria's Secret and issued an injunction against the use of the name Victor's Little Secret.
Thomas Pink vs Victoria Secret "Pink"
On July 31, 2014, the High Court of Justice handed down its judgment in Thomas Pink Ltd v Victoria's Secret UK Ltd Birss J ruled that Victoria's Secret's use of its sub-brand PINK had infringed Thomas Pink's trade marks for PINK, as the average consumer was likely to be confused by the similarity of the signs.
Thomas Pink Limited, (Thomas Pink) began trading in London in 1984, primarily selling men's shirts, but its business has since diversified to include other clothing items and all of its goods are sold under and by reference to the names Thomas Pink and PINK.
In 2004, the Victoria's Secret group launched a sub-brand in the US called PINK, which now has stand-alone PINK branded stores. In 2012, Victoria's Secret began opening retail outlets in the UK. In its UK PINK stores (although there was some debate in the case as to whether Victoria's Secret had stand alone PINK UK stores), Victoria's Secret sell a wide variety of casual clothing, many of which present the word PINK alone in a prominent way.
Thomas Pink alleged that Victoria's Secret's acts amounted to passing off and infringement of its registered trade marks. arguing that the average consumer is likely to be confused by Victoria Secret's use of PINK as a primary sign on its garments. Pink argued that there was a real risk of false hood to its traditional brand values by association with a lingerie label, which has a very different brand message.
In its defense, Victoria's Secret argued that Thomas Pink's marks were invalid and/or elements of the marks should be revoked for non-use. In particular, Victoria's Secret argued that Thomas Pink could not justify a registration for "clothing" in class 25 because the term was too vague and the evidence of its use did not justify such a registration.
Judge Birss rulled in Thomas Pink's favor. Birss J considered four different types of use of the PINK brand by Victoria’s Secret and found that use of the mark on garments and on store fronts in the UK infringed Thomas Pink’s trade marks, whereas other uses which combined “PINK” with the well-known “Victoria’s Secret” mark (in-store signage and on Victoria's Secret's UK Facebook page) did not infringe, as those uses were unlikely to result in confusion.
Zephyr vs Victoria Secret
In a $15 million lawsuit, Zephyrs, a former major hosiery supplier to VS, claims that the specialty chain has been selling cheap knockoffs under cover of packaging using images of Zephyrs-designed products. Here’s how the Huffington Post sums up the allegations: “Victoria’s Secret used to sell Zephyrs’ Italian-made hosiery, but cut ties with them, switched to a Canadian supplier and allegedly didn’t change images or text on the packaging, except for adding a ‘Made In Canada.'”
This case is currently still in progress
In a $15 million lawsuit, Zephyrs, a former major hosiery supplier to VS, claims that the specialty chain has been selling cheap knockoffs under cover of packaging using images of Zephyrs-designed products. Here’s how the Huffington Post sums up the allegations: “Victoria’s Secret used to sell Zephyrs’ Italian-made hosiery, but cut ties with them, switched to a Canadian supplier and allegedly didn’t change images or text on the packaging, except for adding a ‘Made In Canada.'”
This case is currently still in progress
http://www.bloomberg.com/bw/articles/2014-08-01/thomas-pink-wins-legal-dispute-against-victorias-secret-pink-line
http://www.lexology.com/library/detail.aspx?g=8aa11b02-0a60-4e1a-b3f2-e7fbdec28144
http://abovethelaw.com/2012/08/victorias-secret-sued-for-15-million-over-thigh-high-knockoffs/
http://en.wikipedia.org/wiki/Moseley_v._V_Secret_Catalogue,_Inc.
http://www.lexology.com/library/detail.aspx?g=8aa11b02-0a60-4e1a-b3f2-e7fbdec28144
http://abovethelaw.com/2012/08/victorias-secret-sued-for-15-million-over-thigh-high-knockoffs/
http://en.wikipedia.org/wiki/Moseley_v._V_Secret_Catalogue,_Inc.