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Do you own the rights to your name?

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Do you own the rights to your name?

14 Jan 2014

A recent EU ruling has determined that social media company Pinterest do not own the rights to the word mark ‘Pinterest’, a decision which could force them to change their name to continue to operate in the area. Pinterest was launched in 2010 but did not become well known in the UK until 2012. In the intervening period, the founder of news sharing website Premium Interest applied to register the word as a trademark in January 2012.

The extent of awareness of Pinterest at the time that the trademark application was made was of central importance to the decision. Pinterest’s representatives argued that the mark applied for by Premium Interest should be declared invalid due to Pinterest’s use of their name in the course of trade in the UK and the unregistered rights they had therefore accrued in the mark. Pinterest’s case was that a notional use of the mark applied for would amount to passing off or hijacking of its goodwill.

However, OHIM found that for an alleged prior sign to prevent registration of a new sign, the former must be used sufficiently in a substantial part of the territory. Pinterest attempted to adduce evidence that their site, and the ‘Pinterest’ sign, was in use and well known by the UK public prior to the application for registration of the mark by Premium Interest. OHIM acknowledged that the site was available to people all over the world, but the evidence of Pinterest’s popularity related almost exclusively either to the USA or to the period after the trademark was registered in the UK. As such, they found that Pinterest’s evidence was insufficient to prove that their use of the mark had developed the requisite goodwill and should result in the refusal of Premium Interest’s application.

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Whilst it may have appeared to be a foregone conclusion that they would own the rights in their name, this decision shows that it is dangerous to make such assumptions. Given that even one of the foremost social media sites could not adduce sufficient evidence to show that it was well known enough to be entitled to oppose another applying to register their name, all business owners should consider the need take advice on registering and protecting the name of their business and products from the start. The case also demonstrates the difference between having a reputation and a protective goodwill in the UK.

Pinterest intend to appeal the decision and profess themselves confident of success given that the mark was ‘famous and overwhelmingly associated with (their) service in Europe’. However, the initial decision regardless serves as a reminder to owners of intellectual property to be proactive about protecting their rights as early as possible to avoid a situation such as this one. Pinterest must have considered global expansion given their success in the US and therefore perhaps should have considered protecting their position in the UK and Europe sooner. If the decision stands, Pinterest will either have to negotiate an agreement with Premium Interest for the use of the mark or will possibly need to change their own name for use in this jurisdiction to avoid liability for trademark infringement.

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