US social network fails to stop UK company from registering the PINTEREST mark.

Pinterest Inc., the US based social networking site, has recently failed to prevent a small UK based company from registering the PINTEREST trade mark in the European Union.

Premium Interest Ltd, a London-based social news aggregator, filed an application to register the mark PINTEREST as a Community Trade Mark on 31 January 2012. At that time, although well established in the US, Pinterest’s use of the mark in Europe had been limited and Pinterest had not filed any trade mark applications for the mark anywhere in the world, including the US, its home country.

Pinterest filed an opposition against the application of Premium Interest on the basis of a conflict with Pinterest’s earlier unregistered rights in the mark. However OHIM found that Pinterest had not established that they owned any earlier rights on which to base an objection to registration of the Premium Interest application. The evidence of use that Pinterest submitted in the proceedings showed only that the brand had attracted media coverage in the UK, and was not deemed sufficient to establish that the general public in the UK had learnt to recognise the mark as a trade mark of Pinterest.

As such, Premium Interest’s application will be allowed to proceed to registration by OHIM unless Pinterest file an appeal against the decision.

The case illustrates the importance of seeking registration of a trade mark as soon as possible, and ideally before a business commences trading, rather than relying on unregistered rights generated through use. It can be very difficult to establish that a trade mark has acquired sufficient unregistered rights to substantiate a trade mark opposition or infringement case, and unless it can be shown that a third party has sought to appropriate the trade mark through bad faith, little can be done in such circumstances.