First-to-file principle fauls Pinterest
Since 2010 the social media site Pinterest has been growing in popularity. Users all over the world log on to the website to share “pins” – images and short texts for everyone to see. The subjects of the pins are everything from iconic art and recipes to “hobbit safety videos” and “homes on stilts”. Diversity is key, and the users have responded overwhelmingly positive.
As a result of their growing popularity, Pinterest decided to file for a community trademark with the Office for Harmonization in the International Market (OHIM). The application, however, was not filed until 2012 – and beforehand, UK-based company Premium Interest had filed a trademark application for “Pinterest” for their news website.
Pinterest opposed Premium Interest’s application – claiming that they had unregistered rights for the trademark Pinterest in the United Kingdom and in the rest of Europe, based on their use since 2010. OHIM, however, didn’t find the submitted evidence to show sufficient use or awareness of the mark in the EU. It was OHIM’s view that the evidence from Pinterest only proved used in the United States, which could not be used as a foundation for unregistered rights in the EU. The opposition was therefore rejected in its entirety.
Pinterest – now the owner of millions of satisfied users and no trademark to show for it – has indicated that an appeal is on the way. If, however, the appeal is unsuccessful, Pinterest may have to agree to a settlement or licensing agreement – both very unsatisfying, as Pinterest could have easily obtained the necessary rights, if only the proper filing had been done in time.
If neither a settlement nor licensing agreement is possible, Pinterest will have use an alternative name in the EU. Something that undoubtedly will dampen the enthusiasm of the many users.
The ruling is a hard blow for Pinterest – and a classic case of just how important it is to get moving, when you have something worth protecting. If you don’t file, someone else will – and the first-to-file principle is hard to overcome. Just ask Pinterest.