The English High Court has held that the worldwide trademark coexistence agreement between Thomas Pink and Victoria’s Secret does not stop Victoria’s Secret from suing over a PINK-branded clothing range in the United States. In Thomas Pink Shirtmaker LLC v Victoria’s Secret Stores Brand Management LLC [2026] EWHC 2817 (BP), handed down on 5 November 2026, Deputy Judge Justin Turner KC construed clause 5.5 of the parties’ settlement and co-existence agreement of 27 July 2015, preferred Victoria’s Secret’s reading of it, and refused Thomas Pink’s application for an anti-suit injunction. World Trademark Review reported the outcome the following day.
The dispute arose in August 2026, when Victoria’s Secret discovered that Thomas Pink had launched in the US a range of athleisure womenswear branded externally, in prominent letters, with the word PINK. Victoria’s Secret sued for trade mark infringement in the Southern District of Ohio. Thomas Pink answered that the claim was barred by the non-assert in clause 5.5 — and because clause 26 of the agreement gives the English courts exclusive jurisdiction over its interpretation, both sides issued Part 8 claims in London (IL 2026 000130 and IL 2026 000141), heard together on 20 October 2026. The 2015 agreement had settled the English action in which Birss J held on 31 July 2014 ([2014] EWHC 2631 (Ch)) that Victoria’s Secret’s use of PINK infringed Community trade mark 3,949,906 and UK trade mark 2,565,078, together with a Canadian Federal Court action (T-1274-13) and the oppositions and revocations listed in Schedule 4.
Everything turned on one layered exception. Clause 5.5 is Victoria’s Secret’s promise not to assert its PINK rights against Thomas Pink or its Related Parties; clause 5.5.2 lifts that promise where a Pink Mark is used “in connection with a brand or a range of products associated with a brand or business other than the TP Business”. And “TP Business” is defined as the business from time to time conducted under the brand name THOMAS PINK. Thomas Pink argued that a commercial connection was enough — the US goods were made under licence from it, and LVMH-owned entities were Affiliates. The judge disagreed. In an agreement about branding, he held, “associated” is used in a trade mark sense: the question is whether consumers associate the range with a brand other than THOMAS PINK, assessed under the law of the place where the act occurs. Defining the non-assert by who owns the business rather than by what brand it trades under would be inconsistent with the rest of the agreement. The US products are associated with the brand PINK, so the exception bites and the non-assert falls away.
The company that signed is not the business that is protected
This is the practical sting, and it has nothing to do with lingerie. A trademark coexistence agreement whose protective definitions are keyed to a brand name gives nothing to the rest of the corporate family. Licensees, affiliates, newly acquired labels and sub-brands sit outside the shield unless the products they sell are associated, in the consumer’s mind, with the named brand. The judge expressly refused to read “business conducted under the brand name THOMAS PINK” as covering sales by any company bearing Thomas Pink in its name, or by affiliates and licensees that do not carry the name at all.
So the audit task is concrete: pull every settlement and trademark coexistence agreement in the portfolio and ask what each defined term is anchored to. If the intent was corporate — “us and everyone we own” — the clause has to say so, by reference to ownership or to a named schedule of entities. If the intent was brand-level, then every licence programme, collaboration and brand extension needs to be tested against it before launch, not after a cease-and-desist lands.
A worldwide deal still mirrors the market you held on signing day
The judge’s route to his conclusion was the factual matrix, and it is the most transferable part of the judgment. The 2015 agreement, he found, largely preserved the status quo: Thomas Pink had won in Europe, which is why clause 7.2 obliges Victoria’s Secret to pay a 7.5% royalty on the factory cost price of qualifying products dispatched to Europe from 1 January 2016, and why clause 4.1 required its stores, labels and marketing outside North America to rebrand to “Victoria’s Secret Pink” in lock-up format. There was no mirror-image provision licensing Thomas Pink into the US. Victoria’s Secret had traded under PINK in the US since the early 2000s; there was no evidence Thomas Pink had. Permitting Thomas Pink to sell US clothing under PINK for the first time would have been a central concession, and the judge held it would have been clearly stated had it been agreed.
Read that as a rule for your own files. A trademark coexistence agreement signed to end a dispute in one region is priced on the parties’ positions in that region at that date. It does not quietly license you into a territory where you had no use when you signed, however global the recitals sound. Before a legacy agreement is relied on to support entry into a new market, the honest step is a fresh clearance search in that jurisdiction and, where the gap is real, a filing of your own — which is the point of a trademark clearance and search programme rather than a contract review. Note too that the carve-outs ran both ways: each side kept its core market out of the other’s non-assert, Thomas Pink for women’s formal shirts and menswear worldwide, Victoria’s Secret for women’s lingerie worldwide.
An internal label will not rescue external branding
Thomas Pink’s fall-back was that its goods all carry a THOMAS PINK label, in small letters, inside the garment. The judge rejected it, and the reason matters for anyone running merchandise, capsule collections or athleisure line extensions. Birss J had already decided in 2014 that Victoria’s Secret infringed by putting PINK on the outside of clothing despite a Victoria’s Secret neck label or swing tag, because the post-sale context — what a passer-by sees on a worn garment — is a fair context in which to judge the sign. It would be strange, the judge said, for a settlement otherwise consistent with that judgment to let an interior label defeat the exception. If the word on the chest is the brand the consumer reads, that is the use being judged.
The jurisdiction clause splits the fight across two courts
Three procedural points are worth banking. First, an exclusive jurisdiction clause in a trademark coexistence agreement does exactly what it says: the construction fight ran in London while the infringement claim sat in Ohio, and the anti-suit injunction failed once the construction went the other way. Budget for two forums, not one. Second, the relief is deliberately narrow. The judge’s provisional view was that any declaration should be tied to the goods actually in issue in the Ohio proceedings, and he declined to redraft clause 5.5.2 to cover future situations he had not considered; the parties were invited to settle the form of declaration at a short hearing. The next product line may therefore need its own trip to London. Third, he criticised as “ill-judged” Thomas Pink’s service of a Civil Evidence Act notice running to over 1,000 pages in Part 8 proceedings, for which no permission had been given. Part 8 is for short points of construction on facts that are not in dispute.
What to change this week
Four things follow for anyone holding a trademark coexistence agreement older than a product cycle. Check whether the protective definitions are anchored to a brand name or to corporate ownership, and whether your licensees are inside or outside. Map the agreement’s territorial logic against where you actually traded when you signed it, and treat any new market as unlicensed until proved otherwise. Replace layered exception-on-exception drafting with positive schedules of permitted goods, territories and formats, plus a notice mechanism for brand extensions. And where the agreement turns out not to cover a market you now want, deal with it as a registration and clearance problem — a trademark filing in the target jurisdiction — rather than hoping an eleven-year-old settlement stretches to fit.
Two questions remain open. The form of the English declaration is still to be settled, and the Ohio infringement claim now proceeds on its merits with the contractual defence removed for the goods in issue.