The company behind the social media site Pinterest has had its case against Premium Interest’s application for a Community Trade Mark (CTM) for PINTEREST sent back to OHIM’s Opposition Division for re-examination. In March 2015, the Board of Appeal held that further pieces of evidence submitted by Pinterest, Inc., both during the appeal proceedings and outside of the initial allocated time limit set by the Office, could be of relevance to the outcome of the case.
The case offers a breath of fresh air to internet-based companies who may have to resort to using unregistered rights to protect their brand, whilst also demonstrating that the Board will exercise its discretion where it sees fit when it comes to deadlines set by the Office.
Premium Interest Limited – a news aggregate website – filed a CTM application in January 2012 for the mark PINTEREST in relation to various services such as entertainment, sporting and cultural activities in class 41 and legal services in class 45. Pinterest, Inc., the US company behind the social media site, Pinterest – where users can ‘pin’ various images and other media content of interest to so-called ‘pin boards’ – filed an opposition to Premium Interest’s application on the basis of its unregistered rights in the mark PINTEREST, under Article 8(4) CTMR.
In order to base an opposition on unregistered rights, Pinterest had to show that its mark has been used in the course of trade, that this use is of more than local significance and it was prior to the filing of Premium Interest’s application. In the UK, this right is known is ‘passing off’ and to successfully oppose on this basis, established case law provides that Pinterest would also need to show goodwill in its mark, misrepresentation by Premium Interest and damage to Pinterest’s goodwill.
In issuing its decision back in late 2013, the Opposition Division opined that, although Pinterest’s evidence clearly demonstrated that the mark was well-known in the US, it failed to prove that its unregistered right was of more than mere local significance in the UK.
In particular, the Division was not able to “adduce the economic dimension of the mark from its mere presence on internet blogs or newspapers” – arguably not an inconceivable hurdle to overcome for many Internet-based brands seeking to establish similar claims. In addition, whilst an affidavit can be useful evidence in opposition proceedings, the statement of truth submitted by Pinterest was given less weight as it was a statement from an interested party (in this instance their Deputy General Counsel) and was not supported by evidence from external sources. Consequently, the Opposition Division rejected Pinterest’s opposition in its entirety.
Pinterest then appealed the decision and the Board of Appeal has now found in its favour, remitting the case back for examination for consideration of the additional evidence. In reaching its decision, the Board stated that Rule 50(1) of the CTMR expressly provides that it may take into account additional or supplementary facts and evidence which were not submitted within the time limits, should it consider this necessary pursuant to Art 76(2) CTMR.
In this instance, the Board held that the additional evidence was meant to supplement the initial evidence that had been filed in good faith and that this evidence could affect the outcome of the proceedings. In effect, the Board was of the opinion that the additional evidence was “likely to corroborate and confirm claims and information which had already been provided in due time before the Opposition Division”. Accordingly, the Board annulled the decision of the Opposition Division and sent it back for further examination in view of the additional evidence.
It will be interesting to see what the Opposition Division makes of the additional evidence but in the meantime, the case may provide some reassurance to internet-based businesses that may need to reply on unregistered rights to maintain their monopoly in the UK, in the absence of a registered trade mark portfolio.