Posted on Mar 12, 2015
This will be of interest to businesses providing internet based services without a registered trade mark because it shows the difficulties in relying on rights in unregistered marks.
In 2012, a London based, online news aggregation website trading under the name, Premium Interest, tried to register the trade mark PINTEREST.
Pinterest, objected to the registration. As will be common knowledge to most, Pinterest is "a visual discovery tool that you can use to find ideas for all your projects and interests". The concept has really taken off in the last few years, but in 2012, Pinterest did not have any registered trade marks in the UK or elsewhere across the globe. Thus, it had to rely on unregistered rights. It had to present evidence to show that it had a reputation in the UK before the filing of the trade mark by Premium Interest.
At first, the Trade Mark Office decided in favour of Premium Interest and rejected the claims of Pinterest. This was partly because the evidence submitted on behalf of Pinterest failed to show that PINTEREST had been used in the course of trade by the social media site. Evidence from the in-house lawyer at Pinterest showing user figures was not corroborated and this was fatal to Pinterest. The result of this decision meant that Pinterest would have to change its name in the UK, or alternatively, it would have to pay the owner of Premium Interest to use the trade mark PINTEREST.
Unsurprisingly, Pinterest appealed and the appeal court has decided that new evidence to corroborate the in-house lawyer's evidence can be, and should be, considered before a final decision is made. In light of this, it is highly likely that Pinterest will win this battle. That would be the just outcome here – the other company, Premium Interest, hasn't yet launched its product and hasn't used the disputed trade mark.
Had Pinterest filed trade mark applications in the UK and the US at the launch of Pinterest, there would be no requirement to prove the brand had a reputation in the UK in 2012. This is the main advantage of having a registered trade mark. Too often tech start-up businesses can experience rapid growth, and it is especially important for these businesses to register early or risk losing the right to trade under the name.
Gemma Ogilvie is a specialist Intellectual Property, Technology and Media Solcitor. We are always delighted to talk without obligation about whether we might meet your needs. Call Gemma on 01382 229111 or email email@example.com
Categories: Intellectual Property