Premium Interest registered the name long before Pinterest launched in Europe
Content sharing website Pinterest could be in trouble, after it emerged that the European trademark for the company name was registered by a London-based start-up Premium Interest two months before being filed in the US.
Pinterest enables its users to ‘pin’ whole sections of websites to their virtual ‘boards’. It has based most of its marketing and visual design on the name, coining new terms like ‘pinteresting’.
However, the European Commission’s Office for Harmonization in the Internal Market (OHIM) has ruled that the British company is the original owner of the trademark on this side of the Atlantic. This could hinder Pinterest’s European expansion, and even force it to change the company name.
This might seem unusual, but the size or success of the company have no relevance on trademark disputes. For example, in August 2013 Microsoft was told to change SkyDrive branding worldwide, after a UK court ruled the name infringed on a trademark registered by British Sky Broadcasting Group (BSkyB).
Premium Interest is developing a news aggregator that looks and feels like a collection of newspaper cuttings plastered on the wall. It was originally available online, but has gone exclusively mobile since the beginning of 2014.
The European Trademark Office says that British entrepreneur Alex Hearn registered ‘Pinterest’ in January 2012. Several months later, after enjoying roaring success in the US where it quickly became the third most popular social network after Facebook and Twitter, Pinterest formally launched in Europe.
Despite the fact that Premium Interest is yet to use the name in its branding, OHIM ruled that Hearn owns the trademark and ordered the US company to pay the court costs. It hasn’t awarded Premium Interest any damages, at least not yet.
According to legal experts quoted by TechCrunch, the decision could force the social network to change its name, unless it obtains a licence.
The ruling points out that Pinterest submitted weak evidence of the UK consumers being familiar with the brand before 2012, and missed a critical deadline for document submission.
“People from all over the world, including the United Kingdom, can visit the website Pinterest and become familiar with the abovementioned non-registered mark. Nevertheless, the Opposition Division cannot come to the conclusion, not even on the basis of probabilities or suppositions,that the alleged use of the mark is indeed proven in the United Kingdom and, in such a case, that the use is not confined to a small part of that territory,” reads the decision.
“Furthermore, a significant part of the evidence provided, that includes such references in respect of the use of the mark in the relevant territory, is dated after the relevant date.”
Pinterest plans to appeal the ruling. However, due to the OHIM guidelines it might be unable to put any new evidence forward, just arrange a review of the current decision.
Microsoft previously abandoned the ‘Metro’ name for its Windows 8 user interface, following a lawsuit brought about by German retail group Metro AG. Microsoft never acknowledged any connection between the name change and Metro’s legal threats, instead saying that ‘Metro’ was a development codename that was due to be changed anyway.
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