Trade mark decision

BL Number

O/328/07

Decision date

6 November 2007

Hearing officer

Mr M Reynolds

Mark

PINK RIBBON

Classes

16

Applicant

Breakthrough Breast Cancer, Breast Cancer Care & Breast Cancer Campaign (Jointly)

Opponent

Gerard Dugdill

Opposition

Sections 3(6) & 5(4)(a)

Result

Section 3(6): Opposition successful in respect of certain goods. Section 5(4)(a): Opposition successful in respect of certain goods.

Points Of Interest

• None

Summary

The magazine PINK RIBBON was first published in 1994 by the opponent’s predecessors in title in conjunction with these applicants. Part of the cover price of the magazine went to charity and the applicants names appeared on the cover of the magazine. The device of a pink ribbon is associated with the raising of money for cancer research and special promotions take place in October each year. In this case the magazine PINK RIBBON was published in October (annually) to coincide with the extra publicity generated by the various charities.

The applicants sought to justify their decision to apply for the mark in suit by pointing to the fact that the device of a pink ribbon is associated with Cancer Charities and registration of the words PINK RIBBON would enable these charities to protect themselves and other charities when undertaking fund raising activities. Also the Charities Commission had investigated the opponent’s predecessors as regards promised contributions to charity and thus any goodwill accruing to the opponent was in some way tainted.

In relation to the Section 5(4)(a) ground the Hearing Officer examined the evidence carefully. He noted that the chain of title to the present opponent was established; that the charity commission had found nothing untowards in its investigation and that at no stage had the applicants or their associates claimed to be publishers of the magazine PINK RIBBON. The Hearing Officer went on to conclude that the opponent had a reputation and goodwill in respect of magazines and opposition succeeded on this ground in respect of “printed matter and printed publications”. Applicants allowed to retain other goods such as “paper, cardboard, stationery etc”.

In relation to the Section 3(6) ground the Hearing Officer accepted that the applicants might have had good intentions to protect the mark for charitable use rather than commercial use but this was not enough. The applicants knew the opponent was the publisher of the magazine PINK RIBBON and at least one of the applicants was in discussion with the opponent after the filing of the opposition. Therefore, the applicants knew they were not the owners of the mark when they applied to register it. It follows that the opponent was also successful in this ground in respect of “printed matter and printed publications”.