Judgment
MR. JUSTICE BIRSS:
This is the first of a series of judgments that I will give this morning dealing with the various consequential matters arising from my main judgment in this case, which I have just handed down, which is reference [2014] EWHC 2631 Chancery.
DRAFTING OF THE INJUNCTION
The issue is the precise drafting of the injunction to be granted. The parties are agreed that in the circumstances arising from the judgment I have just given, an injunction restraining the defendant from infringing the UK trade mark in the United Kingdom and the Community trade mark in European Union and drafted in general terms (subject to a point I will deal with) is appropriate. In my judgment, they are correct in that agreement, given the variety of ways in which the defendant has been found to infringe those marks.
The point at issue is whether or not the injunction should contain a proviso in the following terms:
"Provided that the use of the sign 'VICTORIA'S SECRET PINK' where all three words are in the same font and size, spaced equally and given equal prominence, is not within the scope of the foregoing injunctions or either of them".
That is the proviso. The point is that in the judgment I held that the only use made of the phrase VICTORIA'S SECRET PINK in lockup format, which is what that proviso refers to, was on a Facebook page belonging to the defendant or another member of the same Victoria's Secret group. I held that that Facebook page was not directed to the EU and, accordingly, whatever is on it cannot infringe either the UK trade mark or the CTM.
I also held, since it was argued fully before me, that the use of VICTORIA'S SECRET PINK in lockup format on that Facebook page, in the context of that Facebook page, was not an infringement even if the page had been EU facing, either under Article 9(1)(b) or Article 9(1)(c) of the CTMR or the corresponding provisions in the 1994 Act.
Miss Himsworth, on behalf of Victoria's Secret, submits that it is important that the proviso is included in fairness to the defendant and acts as a fair balancing of the parties' rights in these circumstances, in particular because the court did not make a finding that VICTORIA'S SECRET PINK in lockup format is an infringement. Accordingly, VICTORIA'S SECRET PINK in lockup format is not part of the list of things which the defendant has been told not to do. The point, therefore, is to avoid, from the defendant's perspective, a potential chilling effect of the i
