The battle for the Pinterest brand: Pinterest, Inc v Premium Interest Ltd Case R 102/2014-2

This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.

The battle for the Pinterest brand:Pinterest, Inc v Premium Interest LtdCase R 102/2014-2

This case reinforces the importance of filing your trade mark applications early as it is difficult to adduce sufficient evidence of goodwill in the early stages of a business to discharge the burden of demonstrating a right in passing-off in the context of opposition proceedings.

Background:

Premium Interest, a UK online news aggregation site which trades as Pinterest, owns a Community Trade Mark Application No. 10605749 PINTEREST registered in respect of a range of services including entertainment services.

In February 2012, Pinterest Inc, the US based social media company which operates a free photo sharing website, filed Community Trade Mark Application No. 10633981. In May 2012, Pinterest Inc. filed an opposition against Premium Interest's CTM Application relying on Article 4 CTMR, i.e. the English law of passing off.

In July 2014, Pinterest also commenced proceedings in the UK to confirm its rights in the PINTEREST mark [Pinterest, Inc v Premium Interest Ltd & Anor [2015 EWHC 738 (Ch)]]. They wished to obtain a ruling to confirm whether or not, in the event that Premium Interest's CTM is registered, Pinterest could protect its brand by protecting the Defendant from using the PINTEREST mark in the UK.

Both proceedings centre round the common issue, did Pinterest have protectable goodwill in the trade mark PINTEREST in the UK as at 31 January 2012 (the date of Premium Interest's CTM application) in order to entitle them to restrain Premium Interest's use of PINTEREST on the ground of passing off.

CTM opposition

In November 2013, OHIM's Opposition Division rejected Pinterest's opposition on the basis that its evidence was not persuasive in proving that its PINTEREST mark was in use in the UK on or before the filing date of Premium Interest's CTM filing. Furthermore, Pinterest had not proved that it owned substantial goodwill in PINTEREST in the UK as at 31 January 2012. The Opposition Division drew attention to the Opponent's Deputy General Counsel's affidavit which included internet visitor figures to Pinterest's website from internet users in the UK, and registered user figures for users located in the UK and EU. It held that, 'as far as the probative value of the statement is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence.'

Board of Appeal

Pinterest appealed OHIM's decision arguing that it should have exercised its discretion to consider evidence which Pinterest Inc. had filed late and in which, Pinterest argued it had demonstrated the necessary goodwill in the UK prior to 31 January 2012.

Pinterest also submitted new evidence before the Board of Appeal, namely Witness Statements from third party auditing firms which included analysis of number of visitors to its website aimed at addressing the Office's concern regarding the objectivity of the initial user data provided by the Opponent.

In February 2015, the Board of Appeal issued its decision which annulled the Opposition Division's decision and remitted the case back to the Opposition Division. It held that the late evidence filed by Pinterest (both during the opposition and at appeal stage), was relevant and since it was provided prior to a decision it should have been considered by the Opposition division.

Premium Interest has confirmed that it intends to appeal to the CJEU against the Board of Appeal's decision.

UK proceedings

Meanwhile, Premium Interest recently applied for a stay of the UK proceedings (until the OHIM Opposition proceedings have been resolved) based on the following factors:

• The UK proceedings will become unnecessary if Pinterest Inc. is successful in the Opposition;
• The Opposition proceedings represent a cheaper way of resolving the dispute between the parties;
• A stay would not prejudice Pinterest Inc. as they were content for the issue to be determined by OHIM and only changed their mind once the Opposition decision had been issued.

Pinterest resisted a stay of the proceedings, based on the following reasons:

• They contend that a delay in the proceedings negatively affects their ability to develop their brand in the UK;
• The UK proceedings are likely to be concluded quicker;
• The Opposition proceedings are unlikely to be cheaper than the UK proceedings once the various appeal options available in OHIM proceedings are considered.

Justice Arnold declined to grant a stay of the proceedings, citing the relative timings of the two sets of proceedings as an important influence in his decision.

Takeaway points

• File your mark applications as early as possible to establish your rights. It is difficult and can be expensive, to contest trade mark registrations on the basis of unregistered rights, particularly as a new business.

• If you need to apply for an extension of time during opposition proceedings at OHIM make sure that you request this in good time.

• Never assume that a second extension of time will be granted, even if requested under special circumstances, such as the appointment of a new representative.

• If your evidence refers to online data and statistics, ensure that these are corroborated by independent third party sources.