If a recent EU trade mark ruling is upheld, crafty DIY-ers, Martha Stewart wannabes and eager wedding planners could find themselves “pinning” images to a social media platform with a name other than “Pinterest”.

This is the result of a recent decision by the Opposition Division of the EU Office for Harmonisation in the Internal Market that Pinterest – the host of an online scrapbook of sorts for users to “pin” inspirational images from other blogs and websites – is not the owner of trade mark “Pinterest” in the EU.

Pinterest has suggested it is going to appeal the decision, but unless it is successful, Pinterest could face the risk of trade mark infringement proceedings if it continues to use its name in Europe.

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Source: Pinterest logo uploaded on 6 November 2011 to Pinterest’s website: http://pinterest.com/about/goodies/ provided on Wikipedia Commons: http://commons.wikimedia.org/wiki/File:Pinterest_logo.png

EU Decision

The EU Office rejected Pinterest’s opposition to the registration of the trade mark “Pinterest” by Premium Interest, a London based online news aggregation site for subscribers (which has yet to use the Pinterest mark).  Premium Interest filed its trade mark application for “Pinterest” in the UK on 31 January 2012, before Pinterest had filed its UK trade mark application.

In opposing Premium Interest’s application, Pinterest relied upon article 8(4) of the Community Trade Mark Regulation which enables the proprietor of a non-registered trade mark to oppose the registration of a trade mark if it satisfies a number of elements, one of which is that prior to the filing of the contested mark, the non-registered mark has been used in the course of trade of more than local significance.

Significance of Pinterest?

Pinterest presented a range of evidence to prove its significance including online UK news articles discussing Pinterest as the next big thing in the weeks leading up to the application date for the Pinterest trade mark and data about the increase in UK Pinterest users in the period leading up to the trade mark application date.

But this was not enough to prove to the EU Office that Pinterest had “more than local significance”.  Despite the fact that social media has no international borders, the EU Office found that at the application date for Premium Interest’s mark, Pinterest had great significance in the US but was only just getting started in the UK.  This territorial approach in examining the online brand seems to underestimate the global connectedness created by social media.

The Office’s decision appeared to be influenced by its reluctance to rely on online sources to gauge the significance of the mark.  This seems illogical when the trade mark being considered relates to a social media site.  Given the increasing prominence of online and social media brands around the world, one might think it is time for a more open minded approach to the kinds of evidence which can be used to demonstrate the reputation of not only social media brands but any trade marks.

Australian opposition

Pinterest is currently in the process of opposing an application by Premium Interest to register “Pinterest” in Australia, with Premium Interest due to file its evidence in answer on 22 January 2014.  Premium Interest lodged an application to register “Pinterest” in Australia on 31 July 2012; however by virtue of section 29 of the Trade Marks Act 1995, Premium Interest claims a priority date of 31 January 2012 (being the date which its application was filed in Europe).  Pinterest lodged its own application for “PINTEREST” in Australia on 7 February 2012, two weeks after the European application date of Premium Interest’s mark.

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Source: Pinterest 2012 Creative Commons Aitortu-Partekatu uploaded 2012-02-08 (http://www.argazkiak.org/photo/pinterest-2012/)

Reputation in Australia?

We don’t know what arguments Pinterest will make in its opposition. It may attempt to oppose Premium Interest’s trade mark application under section 60 of the Trade Marks Act by arguing that its trade mark “PINTEREST” had acquired a reputation in Australia before the priority date for Premium Interest’s trade mark application (31 January 2012) and that because of the reputation of PINTEREST in Australia, the use of the trade mark by Premium Interest is likely to deceive or cause confusion.  This would require Pinterest to provide evidence of its reputation in Australia in January 2012.  Again Pinterest would face the evidential hurdle of trying to prove Pinterest’s historical reputation.

In Australia, Pinterest may also seek to rely on the “bad faith” ground of opposition under section 62A of the Trade Marks Act, given that Premium Interest would inevitably have been aware of the Pinterest site, and its reputation, at the time of filing its application in January 2012. Pinterest’s social media platform was launched in 2010 and by January 2012 had several million active users globally. Premium Interest, on the other hand, a London-based social news startup, has yet to use the Pinterest name (which it claims is due to legal reasons associated with the Pinterest opposition).

Online evidence in Australia

In contrast to the decision by the EU Office, Australian courts and the Australian Trade Marks Office seem to be showing an increasing willingness to give weight to online sources in considering reputation in trade mark proceedings and oppositions, as well as in passing off actions.  This has been indicated by the recent Federal Court decisions: TiVo Inc v Vivo International Corp Pty Ltd [2012] FCA 252 and Knott Investments Pty Ltd v Winnebago Industries Inc (2013) 299 ALR 74FCAFC and the Australian Trade Mark Office decision in Hilton Hospitality Inc v Waldorf Australia Group Pty Ltd [2013] ATMO 20.  In each of these cases, weight was given to online articles and websites referring to trade marks owned by companies predominantly operated overseas, as providing evidence of “spill-over” reputation in Australia.

So it seems possible that the Australian Trade Marks Office may find that Pinterest’s reputation in its name in Australia as at the application date was sufficient to establish a likelihood  of deception or  confusion. If established, Pinterest’s opposition should be sustained under section 60 of the Trade Marks Act, or possibly the “contrary to law” ground in section 42.

“Pin”-worthy points

The sticky situation Pinterest has found itself in by failing to secure ownership of the trade mark “Pinterest” in Europe and possibly in Australia and other locations around the world highlights the importance of businesses registering their trade marks as soon as possible, and using the trade marks as soon as possible.

Businesses which depend heavily on their brands, particularly those operating online, need to ensure they develop defensive trade mark strategies from the inception of their brand to ensure that they have sufficient evidence to prove use of their trade marks if they are challenged, or if the business seeks to oppose a registration of a similar trade mark.