Judges ruled that the social network cannot use the Pinterest trademark in Europe after a claim by a rival startup
Pinterest could be forced to change its name in Europe after losing a trademark dispute with a rival startup.
Alex Hearn, founder of London-based social news aggregator Premium Interest, registered the ‘Pinterest’ trademark in January 2012, two years after the US picture sharing service launched. However, Pinterest had not formally entered the European market or even registered its name in the US.
Judges at the European Commission Office for Harmonisation of the Internal Market (OHIM), the EU’s trademark office, ruled that Mr Hearn still holds the rights to the name after the website – which has to pay court costs of €300 (£250) – failed to prove that it is well-known enough in the continent.
“Pinterest will have to change their name if they don’t get a licence from him,” Adam Morallee, the lawyer who represented Premium Interest during the case, told TechCrunch.
Pinterest could appeal the November ruling, which was recently made public, by providing documents showing it was known in Europe before the trademark was registered. However, Mr Morrallee said that this may not be possible due to complex rules surrounding the introduction of new evidence in OHIM appeals.
“To win the case they have to show they had rights before Premium Interest in Europe. OHIM refused that on the basis of the evidence put forward. The fact they are well known in the U.S. is not relevant. What matters is their rights in Europe. And they didn’t have any at the relevant time,” he said.
Pinterest allows users to “pin” content from around the web to their virtual boards, creating themed collections of images. Similarly, Premium Interest is based on personal curated news feeds.
Simon Bennett, an intellectual property lawyer at Fox Williams, said: “This case shows the dangers of not moving quickly in all major markets around the world, which is particularly important for a digital online business like Pinterest. Also, earlier reputation in another country, such as the US, may not be enough in a different jurisdiction if your weren’t the first to apply.”
“We see this happen frequently where a foreign company entering the market thinks that they will be able to easily defeat a local mark. It doesn’t always work and even if you are bigger you may not get your own way.”
“Given the stakes, Pinterest are bound to appeal. However, they will face an uphill battle. Negotiating from a winning position, the price tag for any potential settlement with the profile of Pinterest is likely to be high but so would the costs of a rebrand.”
A spokeswoman for Pinterest said: “We expect to win on appeal because the Pinterest mark was, in fact, already famous and overwhelmingly associated with our service in Europe and throughout the world when Premium Interest filed its application.”
“We submitted extensive evidence of fame in goodwill in the UK and the EU, but the OHIM rejected that evidence on the ground it didn’t come from a neutral source. That requirement was legally improper and we expect that mistake to be corrected on appeal.”
Pinterest announced yesterday that it had acquired VisualGraph, an image recognition and visual search startup.