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