Pinterest case highlights importance of owning the rights to your name

Pinterest, one of the largest social networks behind Facebook and Twitter has lost its trade mark battle against Premium Interest, a London based social news start-up.

As you may know, Pinterest started it’s life in the USA in 2010. The platform provides a photo-sharing platform for users to “pin” inspirational images from other blogs and websites. The network experienced significant success after launch and within nine months it had 10,000 users. By January 2012 social sharing giant had a staggering 11.7 million users (according to Wikipedia).

Despite the record breaking number of users by this stage, Pinterest Inc had overlooked its global trade mark strategies to protect the word mark PINTEREST in Europe. This is surprising considering they had robustly defended other elements of their branding including the Pin-it button, the curvy P logo and variations of the words “pin” or “pinterest” as puns in their names.

So what happened? In a nutshell a European Community trade mark application was filed by AH Innovation Ltd in January 2012. This was for services including “education; entertainment; sporting and cultural activities and personal and social services rendered by others to meet the needs of individuals”. This was assigned to Premium Interest Limited around the same time.

Pinterest attempted to oppose the registration under Art 8(4) of the Community Trade Mark Regulation as the proprietor of a non-registered trade mark. The European Commission Office for Harmonisation of the Internal Market (OHIM) found Pinterest’s opposition insufficient, much of it having been provided too late. Interesting points to note are OHIM’s reluctance to rely on online sources to gauge the significance of the mark. Surprisingly Premium Interest has still not used the contentious mark.

Pinterest intend to appeal the decision but if the decision stands they will need to negotiate an agreement with Premium Interest to continue using the mark. Alternatively, if this is not possible they will need to change their name to avoid liability for trademark infringement. The case displays some similarities to one brought last year by Bristish broadcaster, BSkyB, (normally known as Sky) against Microsoft. In this case Microsoft had to rebrand its SkyDrive to OneDrive after losing its trade mark battle.

Pinterest clearly overlooked the need for trade mark protection. We can’t emphasise enough how important it is to register your trade marks as soon as possible. This is particularly crucial for those depending heavily on brands and operating online. Your trade mark strategy must also account for all of the international jurisdictions you intend to target within your business in the future. The costs of registering a trade mark are minimal compared with those associated with re-branding.

If you think you need help with protecting your brands, including trade marks, patents, design rights and more, don’t hesitate to ask us about it.

Kim Highley

Virtuoso Legal, February 2014

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