Pinterest, currently one of the most popular and influencial social media, has lost the first round in the battle for the Community Trademark (CTM) before the Office for Harmonisation in the Internal Market (OHMI)in Alicante.
On January 2014, the Office rejected the opposition filed by Pinterest against the the identical trademark ‘Pinterest’ applied for by the British company Premium Interest. In OHMI’s opinion, Pinterest, which at the date on which Premium Interest’s application didn’t have any registered trademark in Europe, has not submitted reliable evidences about the existence of earlier (unregistered) trademark rights in UK: “The majority of the evidence that relates to the relevant period prior to the filing of the contested CTMA, that is prior to 31/01/2012, merely mentions the name of ‘Pinterest’ as a social network or explains its functionality, without showing any indication of use or knowledge of it by the relevant public in the United Kingdom. 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” (OHMI decision).
Pinterest has appealed against OHIM’s decision which in my opinion is very doubtful. The Office didn’t take into consideration that even postdated documents could have provided evidences regarding the earlier use of the Pinterest trademark in the UK.
Journalists may be considered independent parties and should verify their facts; furthermore, it is quite obvious that a social network cannot receive 2.000.000 visits and reach 200.000 users in a few days (also because at that time Pinterest was by invitation only).
From another point of view, media news could have given evidence that the social network was under the spot light and this could not have happened unless Pinterest was already using the trademark. Moreover, it seems improbable that Premium Interest ignored the earlier use of the trademark Pinterest, considering that its activity consists in sharing of Internet news.
According to OHIM, the fact that Pinterest, like every Internet website, was potentially accessible to every part of the world, didn’t prove the knowledge or the use of the trademark as required by the regulations. This principle has been applied to previous cases “Jello Schuhpark 11”, “acopaat” e “Salvita”.
However, to compare Pinterest with general websites seems incorrect as Pinterest is a social network which implies the interaction between its users. Probably, if the OHMI had fully understood the difference between a social site and a static website, the decision would have been different. In its guidelines OHMI states that “the value in terms of evidence of internet extracts can be strengthened by submitting evidence that the specific website has been visited and, in particular, that orders for the relevant goods and services have been made through the website by a certain number of customers in the relevant period. For instance, useful evidence in this regard could be records that are generally kept when operating a business web page, for example records relating to the hits attained at various points in time or, in some cases, the countries from which the web page has been accessed” (Guidelines for Examination in the Office, Part C, Opposition).
Since Pinterest is a social network (and not an e-commerce platform) the Office should have considered that “orders for the relevant service” of sharing images had been made through the registration and the following approval of its terms and conditions of service by the members of the network.
If therefore it remains difficult to believe that it wasn’t possible to demonstrate a “real and effective, and not merely local, use” of Pinterest in the UK, the decision makes us rethink about concepts of territoriality and the use of the trademark, as stipulated by national and Community regulations. The Office seems to ignore that the advent of the Internet, as social media, blog and viral marketing, is widely transforming terms and conditions of the traditional mechanisms of birth of the trademark. This phenomenon of “hyperfast ultraterritoriality“, even if it does not concern all the trademarks, seems by now unstoppable.
In the meantime, social networks are warned: launching a global service without filing a Community trademark can be very dangerous!
To read the whole article published by Il Sole 24 Ore on February 22, 2014
