The global branding dispute between Thomas Pink and Victoria’s Secret opened up a front in Canada last month. In the decision, Justice Hughes of the Federal Court found that Victoria’s Secret had standing to seek a declaration that use of marks associated with its PINK clothing line did not infringe or depreciate trade-marks owned by Thomas Pink and to seek an injunction restraining Thomas Pink from commencing or threatening legal action with respect to the use of those same marks.

For those interested in domestic trade-mark practice, the decision demonstrates that the Federal Court is willing to take a broad approach to the term “interested person” in order to facilitate access to relief under the Trade-Marks Act. For those focussed on wider concerns related to global brand management, the decision demonstrates the availability of defensive litigation tactics in the context of a global trade-mark dispute.

The Dispute: Formal Wear vs. Underwear

The action stems from a dispute in the UK between Thomas Pink Limited and a UK affiliate of Victoria’s Secret Stores Brand Management Inc, in which Thomas Pink sued the lingerie retailer for trade-mark infringement. Both stores use a stylized, block-letter version of the word “PINK” in association with their goods and services. However, whereas Thomas Pink largely focuses on formal shirts for men and women, Victoria’s Secret is best known for women’s clothing and undergarments (many with the word “PINK” festooned on the seat of said articles of clothing).

The two brands coexisted for several years until Thomas Pink filed a claim in 2013 with the UK Patents County Court in which it alleged that the use of the stylized PINK logo by the defendant was likely to cause consumer confusion. The statement of claim, according to the Federal Court of Canada, referred to the use of the word “Pink” by affiliates in the USA and Canada.

A previous Trade-Marks Office examiner in Canada had also expressed an opinion that confusion was likely between two of the parties’ marks, in particular Victoria’s Secret's application for a stylized PINK mark (App No 1610249) and an existing registration held by Thomas Pink for its stylized PINK mark (Reg No: TMA624752).

Fearing liability in these jurisdictions, Victoria’s Secret sought declaratory judgments in both Canada and the USA (the Statement of Claim for the US action, filed in the Southern District of Ohio Eastern Division, can be found here).

“Interested Persons” and the Catch-all Provision of the Trade-marks Act

The Trade-marks Act does not provide for a specific procedure to be followed for an application for declaratory judgment of rights conferred through registration. The Act instead provides for a general power to grant relief under s. 53.2:

Where a court is satisfied, on application of any interested person, that any act has been done contrary to this Act, the court may make any order that it considers appropriate in the circumstances, including an order providing for relief by way of injunction and the recovery of damages or profits and for the destruction, exportation or other disposition of any offending wares, packages, labels and advertising material and of any dies used in connection therewith.

It was through this catch-all provision that the defendant parties, Victoria’s Secret (Canada) Corp. and Victoria's Secret Stores Brand Management, were able to ground a proceeding on the basis that they qualified as “interested persons” under the Act. The term “person interested” is defined in s. 2 of the Act, and includes “any person who is affected or reasonably apprehends that he may be affected by any entry in the register, or by any act or omission…under or contrary to this Act”. Most jurisprudence on the term involves s. 57(1) of the Act, which provides for an application to the Federal Court for an order that the register be struck or amended. Given that the term “interested persons” differs from the defined term in the Act and the term used in s. 57, it was an open question whether or not the different terminology should be afforded a different interpretation; the Court decided it should not.

The decision to interpret “interested person” broadly fell on two general principles. First, citing the Federal Court of Appeal’s decision in BBM Canada v Research in Motion Limited, (2011 FCA 151) for the proposition that the Act, and in particular the “Legal Proceedings” provisions is “best met by an interpretation which promotes access to the courts that is as expeditious and proportionate as possible." Second, the Court held that what constitutes a “person interested” depends on the facts of each case. In particular, a “person interested” must demonstrate “a reasonable apprehension that a commercial interest that it has, or may have, may be affected”; and that the threshold for qualifying as an interested person is low.

The court concluded that the low threshold was met by Victoria’s Secret, given the litigation in the UK and a previous report by an examiner which expressed an opinion that confusion may likely exist between the two parties’ marks.

Practice Point: Interested Persons and International Protection

In my opinion, the decision shows that the Federal Court takes a liberal stance on who qualifies as an interested person under the Act. Given that for many large clothing retailers, international commerce is the norm rather than the exception, the decision also shows that certain defensive litigation tactics may successfully be pursued in Canadian courts in the context of trade-mark disputes triggered in foreign jurisdictions.

David Bowden is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.