On 4 October 2013, social media pinboard site Pinterest filed an action in the United States District Court against Pintrips, “a personal travel planning dashboard”, for trade mark infringement, false designation of origin, unfair competition and trade mark dilution. This apparently followed months of polite requests from Pinterest to Pintrips to stop this alleged “illegal conduct”. Not all these causes of action are available in Australia, so this discussion will focus on the trade mark fight.
Pinterest assert its rights in the registered word mark “PINTEREST” and the Pinterest Logo. It also claims it has common law rights to the terms “PIN”, “PIN IT” and the “PIN” prefix, as applied to social media bookmarking services.
According to Pinterest’s complaint (available online), PINTRIPS “is similar in appearance, sound, and commercial impression to PINTEREST” and “to make matters worse” (yes – that is a direct quotation), Pintrips has adopted a PIN button, which Pinterest says is “confusingly similar” to its own “PIN IT” button. We will let you be the judge for now:
Click here to view images.
Pinterest argues that the respective marks have even “appeared in close proximity, which only heightens the likelihood of confusion”, and provides the below example from the Delta Airlines website:
Click here to view image.
It goes without saying that the concept of ‘Pinterest’ (namely, a pinboard) has a descriptive basis, although the swift fame of Pinterest via the development and success of this social media platform has captured attention around the world. Clearly, Pinterest is of the view that ‘Pintrips’ is engaging in copycat behaviour. However, the threshold question will be whether such conduct is wholly derivative, or can be described as justified inspiration. It is also worth asking whether a court’s assessment should differ depending on whether the relevant mark is PINTEREST or, say, PIN. Is it the case that PIN or PIN IT have developed independent reputation as trade indicia? If not, does their proximity to PINTEREST change your view?
Another interesting question will be whether consumers are likely to regard Pintrips as a brand extension of Pinterest (eg as a specialised travel version of Pinterest). In Australia, this kind of argument has found success in a couple of cases (think EBAY v TRADIEBAY, VIAGRA v HERBAGRA and POLO v POLO CLUB), where it was found that members of the public would think that those products were a brand extension or particular version of the original product.
Another issue will be whether there is a prospect that consumers will be confused between the two marks. We can think of a number of cases in the United Kingdom and Australia that have found deceptive similarity between marks, such as VIVO v TIVO, CAT v LANDCAT, YELLOW PAGES v YELLOWNET, MONOPOLY v MUSICOPOLY, REVISE v LEVI’S, MOO v MOOVE and JESTS v EASYJESTS.
In Australia, there appears to be a well-known practice of traders using a particular word as a trademark and then adding prefixes or suffixes to create other trademarks or families of marks, and some have been successful in their actions for trade mark infringement (for example, K-MART against A-MART in K-Mart Corp v Artline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149, and WAGAMAMA against RAJAMAMA in Wagamama Ltd v City Centre Restaurants plc (1995) 32 IPR 613).