Content-sharing social network Pinterest begins 2014 with the prospect of being forced to change its name in Europe in order to resolve a trademark dispute with British start-up Premium Interest. Whatever the outcome of its dispute, it remains a site for trademark counsel to monitor, especially given its latest acquisition.

Pinterest has been active since 2010 but did not file its US trademark until March 2012. Meanwhile, Premium Interest had already registered the trademark in Europe a full two months earlier in January 2012, before Pinterest had formally entered the European market. In a judgment dated November 2013, the Office for Harmonisation in the Internal Market (OHIM) ruled that there was weaker evidence of brand awareness of Pinterest in the UK at the time of registration, and therefore Premium Interest, a London-based social news aggregation start-up, and its founder Alex Hearn had a stronger case to the name.

Christopher Pett, former senior partner and now consultant at Dehns, comments: “By setting up and using their site in the US, starting to promote it elsewhere, and delaying for whatever reason their own trademark applications, Pinterest were always a hostage to fortune. The British applicant’s actions do appear in good faith though in a situation like this you inevitably wonder if it is complete coincidence.”

Speaking on behalf of the Intellectual Property team at Nabarro, senior associate David Parrish told WTR that if Pinterest had filed a CTM application in 2011, it would have had earlier registered rights in Europe. However, Pinterest did not take this step and could only oppose Premium Interest’s CTM application on the basis that Pinterest owned earlier unregistered rights in the name in Europe. “The OHIM Opposition Division concluded that the evidence submitted by Pinterest was not sufficient to prove this and therefore ruled in favour of Premium Interest. Although websites are generally accessible to all no matter where the internet user is based, OHIM’s decision emphasises that use of the related mark in a particular territory must be proved through evidence that relates to that territory in some concrete way.”

Considering Pinterest’s history of defending its intellectual property, such as with its Pin-it button andlogo, it seems unlikely that it will walk away from this dispute without a fight, especially as it raised $225 million last year to fuel further international expansion. Indeed a spokesperson for Pinterest toldTechCrunch that they plan to appeal the recent decision.

Yet Adam Morallee, partner at Mishcon de Reya, who represented Hearn and his company, suggests that the decision will be difficult to reverse, noting that OHIM’s rules mean no new evidence can be submitted: “To win the case they have to show that they held rights before Premium Interest in Europe. OHIM’s refusal was made on the basis of the evidence Pinterest put forward. The fact they are well known in the US is not relevant. What matters are their rights in Europe. And they didn’t have any at the relevant time.”

Morallee told WTR that Premium Interest currently owns the PINTEREST registration in multiple jurisdictions, “a lot of territories around the world but not in the Americas” and “Hearn has no wish to force a negotiation to sell the name”, meaning that “Pinterest will have to change their name if they don’t get a licence from Hearn”.

But whatever name the site operates under, it is one set to grow in importance in terms of trademark monitoring. This week the social media company acquired image recognition and visual search developer Image Recognition. Company founder Kevin Jing states that the move will allow the search start-up to work with Pinterest in a bid to “combine machine vision with human vision and curation, and to build a visual discovery experience that is both aesthetically appealing and immensely useful for people everywhere”. In plain English? To enhance the site’s search capability to scan image as well as text, and present more relevant results.

Writing in Search Engine Watch, Jessica Lee notes that Pinterest is currently working on a monetisation strategy for the site – whether promoted pins or even suggesting ‘related pins’ when a search is undertaken – and writes that this move could “not only prime Pinterest to be a premier image search engine, but also an ideal environment for advertising”. If Pinterest does expand its commercial offering, it will become even more critical for trademark counsel to include it in their policing strategies.

Image copyright : Gil C / Shutterstock.com

This blog was first published in World Trademark Review on 10 January 2014

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