The Presiding Judge of the District Court The Hague (J.Th. van Walderveen) ruled in favour of the Dutch foundation Pink Ribbon in summary proceedings on trade mark infringement against Globalocity B.V, Brandconcern B.V., Pretection B.V., Communitychain B.V. and mr. W.J.A. Scheffrahn (hereinafter referred to as the Scheffrahn Group), report our friends of boek9 today. Pink Ribbon is a non-profit, funding charity involved in improving awareness on breast cancer. Pink Ribbon's main objective is to reduce the number of breast cancer cases, to improve an early diagnosis and the improvement of the healthcare for the patients and their environment. Since the end of January 2007 Pink Ribbon is independent from the Dutch Breast Cancer Society and has its own management. Pink Ribbon has registered several Pink Ribbon trade marks in the Benelux, amongst which the wordmark Pink Ribbon, registered in classes 16, 25, 35, 36, 41, 42, 44 and 45 (September 28, 2005). Since the end of 2006 the Scheffrahn Group filed several Pink Ribbon trade mark applications in the Benelux, at OHIM and international ones (18 mentioned in the Court's decision). Pink Ribbon fights these applications in opposition proceedings, but Pink Ribbon argued that Scheffrahn Group used an unlawful policy that was aimed at getting Pink Ribbon filing their arguments and - instead of replying - withdrawing the trade mark application and filing a new one. A wiki on Pink Ribbon was used in Court to give some background on the litigation. It read that although Pink Ribbon's name gives another impression the foundation is not connected to the American and International Pink Ribbon organisations, and that the foundation is claiming the exclusive trade mark rights - 'together with law firm De Brauw Blackstone' - with regard to Pink Ribbon in the Benelux, although it has had no share in the completion of the international concept. Pink Ribbon had enough of Scheffrahn Group's attitude and send a cease and desist letter in July 2008, which was not met by Scheffrahn Group.
One of the defenses of the Scheffrahn Group was that Pink Ribbon's trade mark registrations were not valid. In a summary proceeding this defense can only be tested pro-actively which means that the Presiding Judge investigates what would be the chances of success of this defense in a procedure on the merits. The Scheffrahn Group argued that the Pink Ribbon trade mark was a free mark, because it consists only of signs or names that have become common in normal language or in the bona fide and established practices of the trade to designate the goods and services for which the trade mark is registered. The Presiding Judge came to the conclusion that Scheffrahn Group did not bring forward enough - convincing - evidence for this argument. The focus in this regard was on the word mark Pink Ribbon and not the well known pink ribbon sign (see picture above).
Furthermore the Presiding Judge found no valid grounds to come to the conclusion that the Pink Ribbon word mark is discriptive for the goods and services. Once again the Presiding Judge finds that use of the pink ribbon logo is not relevant for the question whether the word mark Pink Ribbon is distinctive.
The defense that Pink Ribbon had acted in bad faith was rejected on the formal ground that the overseas Pink Ribbon trade mark owner(s) were not a party to the proceedings.
The infringement question was an easy nut to crack for the President since the Scheffrahn Group - according the President - did not defend itself properly against the allegations. Within this framework the President rejects Scheffrahn Group's argument of the so called 'Abstandslehre' (the registration of a sign that does not keep enough distance from an older registered sign, thus that its scope of protection equals zero), because in the Benelux Pink Ribbon is the only organisation that uses the sign Pink Ribbon as a trade mark. What counted in this respect was that Pink Ribbon argued - and Scheffrahn Group did not object against this argument - that it had a policy of following the market accurately with regard to third party Pink Ribbon registrations (for example Pink Ribbon Sport) and had entered into a co-existence agreement with Novartis that registered the CTM 'Ribbon of Pink'. Pink Ribbon brought evidence in the proceedings that showed - for the President in a sufficient way - that the Pink Ribbon word mark is a well known trade mark in the Benelux. The infringement claims of Pink Ribbon based on the art. 5 of the Directive implementations in Benelux law (art. 2.20 par. 1 a, b, c and d BCIP), but the protection was restricted to the word mark Pink Ribbon.
Apart from the infringement claims Pink Ribbon came up with a claim for abuse of right (Scheffrahn Group's behaviour in the opposition proceedings), which was also awarded, although such a claim is found to be far reaching (it's a sort of anti-suit injunction that the ECJ seems not to be particulary fond of). Pink Ribbon claimed that the Scheffrahn Group should be ordered to refrain from filing trade mark applications for signs in which 'Pink Ribbon' is used or any other combination of the words 'Pink' and 'Ribbon'. The President restricts this injunction until in proceedings on the merits this aspect of the case is decided, or until one of the opposition proceedings is decided in Scheffrahn Group's favour. With regard to Scheffrahn Group's opposition behaviour the President found that Scheffrahn could not give a - good - justification for this behaviour at the hearing, which counted of course for the decision on this claim.
Last but not least Scheffrahn Group was ordered to pay Pink Ribbon's costs: €36,500 to be precise. The President came to the conclusion that this case was a very demanding one and used a wording for this that Tour de France fans among us will definitely like: the case was hors catégorie.
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