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Friday, 6 May 2011

Unknotting the Pink Ribbons: the tale of an anti-filing injunction

The IPKat has been perusing the recent Hague District Court decision concerning the dramatic fate of the PINK RIBBON trade mark application. The "pink ribbon" concept is one which is well known wherever the battle against breast cancer is fought.  The Pink Ribbon Foundation, which was formed in the Netherlands in the 2003, has a number of trade mark registrations for figurative marks incorporating the words "pink ribbon" and device (see eg the mark on the right), among which are some Benelux registrations. The sign was originally used in the 1990s; the Foundation was formed by some of those entities which supported it.

In 2008 the defendant in these proceedings -- an internet trader -- incorporated a company, Pink Ribbon, Inc. which purported to have the same laudable aim as the Foundation, and sought to file various word and figurative signs, including PINK RIBBON, RIBBON OF PINK, PINK RIBBON INTERNATIONAL and PINK RIBBON MAGAZINE as Community and Benelux trade marks. While the right to file a trade mark is normally assumed to be a perfectly legitimate business activity, and indeed is a statutory entitlement in the Benelux, the defendant's conduct was not entirely commendable.  In particular,
  • he withdrew the applications right after the Pink Ribbon Foundation had substantiated its oppositions and incurred considerable costs, and then filed new ones, or had them nullified right after the Pink Ribbon Foundation initiated summary proceedings, by not paying the fees due;
  • he filed applications in various languages in order to drive up the Foundation's translation costs;
  • his filing was done in the full knowledge that these could violate existing registrations;
  • his filings related not only to breast cancer-related goods and services but also to firearms, incubators and carcinogenic substances such as asbestos and tobacco.
No rational explanation was offered for this peculiar behaviour.

The Foundation sued for injunctive relief which included an order that the defendant be prohibited from filing further applications containing the words PINK and RIBBON. The defendant counterclaimed for invalidity of the Foundation's trade marks.

The Court held the Foundation's marks valid and did indeed order the defendant not only to stop infringing the Foundation's marks but not to file further marks as requested by the Foundation. In the event of a breach of this order, a penalty will be exacted to the value of EUR 10,000 per day or per event, as the case may be.

According to Marlou L.J. van de Braak (Hoyng Monegier, Amsterdam, The Netherlands), who acted for the Pink Ribbon Foundation, this may well be the first time a court has ordered a party to refrain from applying for any Benelux or Community trade mark registrations. The Kat can't recall this happening either, and wonders if readers in other countries have ever seen or had experience of such an order.

Full judgment of the court, in English, here
Pink Ribbon Foundation here
In The Pink Foundation here
Scarlet Ribbons here

2 comments:

Anonymous said...

In patent cases where there is a dispute as to ownership of a European patent application and proceedings to establish ownership of the invention are instigated under Art. 61 EPC in the appropriate national court, if proceedings at the EPO are stayed under Rule 14 EPC, then the original owner of the patent application cannot file a divisional application (J20/05 and G1/09). This is because it is necessary to resolve the issue of ownership of the parent before allowing the divisional to be filed by the rightful owner of the parent.

A remote precedent I know, but there are some parallels nonetheless, in particular since both involve the issue of ownership of the original IP right.

It is interesting that the ban appears to have been based on abuse of procedure and deliberate, indeed malicious obfuscation.

Anonymous said...

So you criticise them for having wide specifications?
You criticise them for using the language regime to try and force the other side to work in certain languages?

My understanding is that BOTH of those are typical steps - how many UK attorneys use Italian as the second language rather than French or German in order to try to force Spanish, German or French opponents to use English as the language of the proceedings? It makes me think of the GOLDEN BALLS case. Oh, and the Foundation may wish to explain why its rights in PINK RIBBON include coverage for industrial oils, baby food, land and sea vehicles and cutlery. Wide specifications are not that unusual...

Considering that my understanding is that the defendant represented himself, some might think that it was a very aggressive step by a large and expensive law firm paid for by a large and aggressive charity, when perhaps funds should have been used on other things. From the decision it seems that he had an interest in reaching a settlement, so perhaps that might have solved it.

Given the nature of the trade mark, I'd be interested to learn whether the defendant had threatened the Foundation with proceedings, or whether the Foundation was simply trying to stop yet another party getting rights in Pink Ribbon. If you read the case, it is clear that the defendant believed that the word mark was generic, and this would explain filing applications for the logos notwithstanding the existing rights.

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