Thomas Pink Shirtmaker LLC v. Victoria’s Secret Stores Brand Management LLC — 2015 Settlement Agreement Does Not Bar Victoria’s Secret from Asserting PINK Trademarks in U.S. Ohio Proceedings

Background

This dispute concerns the construction of a Settlement and Co-existence Agreement (the SA) entered into on 27 July 2015 by predecessors of the parties, a worldwide settlement of trade mark disputes relating to the word PINK. It followed UK proceedings in which Birss J held that Victoria’s Secret UK’s use of PINK infringed Thomas Pink’s UK and Community trade marks. The SA contains reciprocal non-assert undertakings: clause 5.1 bars Thomas Pink from asserting its trade mark rights against Victoria’s Secret, while clause 5.5 bars Victoria’s Secret from asserting its rights against Thomas Pink, subject to exceptions including subclause 5.5.2. The present litigation arose after Victoria’s Secret discovered in August 2026 that Thomas Pink had launched in the U.S. a range of athleisure womenswear externally branded in prominent letters with PINK.

Victoria’s Secret sued for trade mark infringement in the Southern District of Ohio, and Thomas Pink said that claim was barred by clause 5.5, which under clause 26 gives the English courts exclusive jurisdiction over SA interpretation. Both parties issued Part 8 claims in the High Court seeking a determination of clause 5.5’s scope, and Thomas Pink additionally sought an anti-suit injunction; the actions were heard together. At the SA date Victoria’s Secret had a considerable U.S. business under PINK, with annual U.S. sales approaching US$2 billion, while there was no evidence Thomas Pink sold PINK-branded products in the U.S. The SA required Victoria’s Secret to pay royalties on certain European PINK sales but contained no equivalent U.S. royalty provision for Thomas Pink.

The Court’s Holding

Deputy Judge Justin Turner KC held that the clause 5.5 non-assert does not prevent Victoria’s Secret from asserting its PINK trade mark rights in the Ohio Proceedings, at least in respect of the products in issue. Subclause 5.5.2 carves out from the non-assert any Pink Mark used “in connection with a brand or a range of products associated with a brand or business other than the TP Business,” and the TP Business is defined as the business conducted under the brand name THOMAS PINK. The court rejected Thomas Pink’s argument that a commercial connection to Thomas Pink or its affiliates, including LVMH, was enough: in a trade mark dispute, “associated” is naturally read in a trade mark sense, meaning consumer perception of association with the THOMAS PINK brand. The products complained of in the U.S. were associated with the brand PINK.

The court reasoned that the SA largely preserved the status quo. Thomas Pink’s success in the UK and Europe explained the royalty provisions, but it had no established U.S. presence under PINK, and a concession permitting Thomas Pink to use PINK in the U.S. for non-formal clothing would have been a central, clearly stated term. The court also rejected Thomas Pink’s fall-back position that interior THOMAS PINK labels brought the garments within the non-assert, observing that Birss J had found infringement from external PINK branding notwithstanding interior labels, and that it would make no business sense to negate the non-assert by a label not evident when the garment is worn.

The court refused Thomas Pink’s application for an anti-suit injunction. It expressed the provisional view that any declaration should be confined to the alleged infringements in the Ohio Proceedings, and invited further submissions and a short hearing to settle the declaration’s form; no declaratory relief was granted in this judgment.

Key Takeaways

• The High Court construed the worldwide co-existence agreement as preserving the parties’ respective market positions at settlement, not as granting new rights in a territory where a party had no established presence.
• The phrase “associated with a brand or business” in a trade mark non-assert clause is interpreted in a trade mark sense, requiring consumer perception of brand association rather than a mere corporate or licensing connection.
• Success in European litigation, reflected in royalty obligations, did not implicitly license or permit use of the PINK mark in the U.S., where no royalty or licensing provision existed.
• Interior garment labels bearing a brand name do not bring externally branded products within a contractual non-assert clause.
• The court refused the anti-suit injunction and left the scope and form of any declaration to further submissions and a hearing.

Why It Matters

This decision clarifies how English courts construe reciprocal non-assert clauses in global trade mark co-existence agreements, reading them in light of the parties’ actual market positions and the specific disputes settled. It confirms that trade mark concepts such as consumer association inform the interpretation of settlement language, and it underscores for practitioners the importance of precise drafting when allocating territorial rights: broad corporate or licensing connections will not expand a non-assert clause beyond the brand under which business is actually conducted.