In principle, anyone is free to apply for the registration of a trademark. However, on 24th September 2008 the Court of The Hague imposed a ban on the registration of the Benelux and Community trademarks for the word mark PINK RIBBON and any marks using a combination of the words “pink” and “ribbon”.
The Pink Ribbon Foundation opposed the registration of PINK RIBBON and marks using a combination of the words “pink” and “ribbon” by Globalocity BV, Brandconcern BV, Pretection BV, Communitychain BV and Walter Julius Albert Scheffrahn (referred to hereafter as the Scheffrahn group).
The Pink Ribbon Foundation is a charitable institution which aims to improve awareness of breast cancer by many different means. It also aims to reduce the number of cases of breast cancer by promoting early diagnosis and improve the care of patients and their environments.
The foundation holds various Benelux PINK RIBBON word and logo marks, the first of which was registered on 27th May 2004, and its marks are protected for a variety of goods and services.
Since the end of 2006 the Scheffrahn group had filed 11 Benelux and seven European applications for various word and word/logo marks using PINK RIBBON or a combination of the words “pink” and “ribbon”. In response, the foundation filed oppositions to seven of the 11 Benelux applications and four of the seven Community trademarks on the grounds of a risk of confusion with its own marks.
On several occasions, at the point when the foundation submitted its arguments in support of its objections against the registration, which would have obligated the Scheffrahn group to file its defence, the group withdrew the application at the last minute and subsequently filed a new application.
At the time of withdrawal, the foundation had spent €124,000 pursuing all the opposition proceedings. They therefore requested a prohibition against the group filing litigious trademarks.
The court held that the Scheffrahn group had deliberately forced the foundation to spend huge sums of money by repeatedly filing new applications and subsequently withdrawing them. The court was of the opinion that this procedure amounted to an abuse of authority and could be regarded as an unlawful act.
Therefore, the court ruled that the Scheffrahn group was prohibited from filing further Benelux or Community trademark applications for the mark PINK RIBBON or for marks using any combination of the words “pink” and “ribbon” until it could rule that the actions of the Scheffrahn group were indeed unlawful. Furthermore, the Scheffrahn group was ordered to pay all the foundation’s legal costs.
The ruling makes clear that a registered trademark gives the owner solid legal rights that can be used to stop all types of infringement. In addition, it is rare for the court to forbid a company – or in this case, several companies belonging to a group – from applying for the registration of a trademark.
In light of the fact that the Benelux and European Trademark Offices are unlikely to refuse such applications if filed, the court has imposed on the Scheffrahn group a fine of €10,000 for each day and each occasion on which the group acts contrary to the court order.