Pinterest non-registered rights unsuccessful

Posted: 4 years ago in: Case Study, News, Trademark DisputePosted By admin

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Pinterest non-registered rights unsuccessful

A British company, Premium Interest Ltd., applied to register a European community trade mark for Pinterest in January 2012.

The American company, Pinterest Inc. filed an opposition against registration of the EU-wide trademark.  However, the opposition was based on non-registered trademark rights. which presented challenges for their case.

The European trade mark office, OHIM, recently considered the opposition, and rejected the opposition in its entirety.

The opposition was based on the non-registered trademarks for the word mark ‘PINTEREST’ used in the European Union as a whole and in the Netherlands, Estonia, the Czech Republic, Denmark, Poland, the United Kingdom, Hungary, Cyprus, Italy, Bulgaria, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland.

The Opponent invoked Article 8(4) CTMR.  Therefore, the grounds of refusal under Article 8(4) CTMR are subject to the following requirements:

  •  Use must be proven – the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark.
  • Rights must be proven as prior existing rights – prior to the filing of the contested trade mark, the opponent must show that it acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark.
  • Rights must be relevant – the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

The decision stated “these conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) CTMR cannot succeed.”

Accordingly, often there are weaknesses inherent in a non-registered trademark.  The owner’s rights, not being registered, can be challenging to prove before a court or a tribunal.

According to Rule 19(2)(d) CTMIR, if the opposition is based on an earlier non-registered right within the meaning of Article 8(4) CTMR, the opposing party shall provide evidence of the acquisition, continued existence and scope of protection of that right.

Moreover, in a case involving opposition on grounds of an earlier right, the Office is confined to consider only the facts, arguments and evidence provided by each side – this includes presenting the applicability of relevant trade mark law in the particular circumstances of the case.

It seems that Pinterest Inc did not satisfy the Office in a number of respects:

  •  The office did not treat its statement of the legal protection claimed as being sufficient to uphold a concrete legal argument to prove its claim.
  •  The evidence of use in trade was not sufficiently proven to the Office for certain of the goods/services within the application.
  •  Several instances of use were claimed or produced in extracts at dates after the relevant date.
  •  Further evidence was provided which was supplied after the time limit for substantiation set by the Office, and was therefore deemed not admissible in the proceedings.
  •  According to Rule 19(4) CTMIR, “the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office”.
  •  According to the Office decision, “Mere references to the website ‘Pinterest’ by, inter alia, United Kingdom newspapers and media do not mean that the public at large, to whom the services of the mark are addressed, are aware of ‘Pinterest’ to a sufficient extent to conclude that the non-registered mark is used in the course of trade of more than local significance.”
  • The Office was not sympathetic to the probative value of statements drawn up “in house” as distinct from independent sources.  Indeed, the Office found the evidence of external and independent sources did not sufficiently support the opponent’s Deputy General Counsels’s affidavit.

 Website Use – Not Sufficient Proof

Even though the Pinterest website was open to be visited by European and British citizens, this does not prove use in the UK.  Not even on the basis of probabilities or suppositions can it be concluded that use is proven in the UK, or that the use is not confined to a small part of the territory.

Without further complementary evidence, according to the Office, figures for website users cannot be taken as sufficient proof in the circumstances – even if the website had 1.9 million visitors in the month of the application.

The European trade mark office rejected the opposition as not being appropriately founded.

We understand that Pinterest Inc. has filed a notice of appeal.

Establishing trademark rights can be complex.

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