UK Company Successfully Claims Ownership of "Pinterest" Trademark

judgecorp writes "Pinterest could be in trouble — a British firm has successfully claimed ownership of the European trademark 'Pinterest', even though it has not yet used the term in any public products. Pinterest was formed in 2011, and popular by 2011, but did not launch in Europe until 2012 — months after the UK company Premium Interest had registered the trademark. That trademark has now been confirmed by the European Commission's Office for the Harmonization in the Internal Market (OHIM). Since so much of Pinterest's business is based on its name, the ruling could force Pinterest to change its name — a move which has precedents: Microsoft is changing the name of Skydrive because it infringes the trademark of British broadcaster BSkyB, normally known as Sky."

Comments

Use it or lose it

[ShanghaiBill]

I know nothing about UK law, but in the USA you have actually use a trademark for it to be valid. If they registered the mark in 2012, and still haven't used it in 2014, then they should be seen as squatters, not legitimate users of the mark.

Re:Use it or lose it

[Anonymous Coward]

I know nothing about UK law...

There's your problem right there!

Re:Use it or lose it

[Threni]

Yes, the Americans certainly seem very sensible with their understanding of the purpose of copyright. Just think, without a bizarre and constantly changing set of rules, material such as Happy Birthday and Mickey Mouse would be in the public domain, resulting in an ugly free-for-all which will strike at the heart of the creators of content everywhere. But specially in America.

Re:Use it or lose it

[Cryacin]

Now you're just taking the Mickey.

Weasfest

[Nerdfest]

From what the summary says, these people saw someone using the name for a US service and claimed the trademark in Europe before the US company could. This seems to me to be an exceptional example of abuse of the system.

Re:Weasfest

[jedidiah]

They haven't used the mark in any public way.

Sounds exactly how some jack*ss tried to hijack the Linux trademark. If UK law allows for this sort of thing then that's rather sad really.

Re:Weasfest

[Attila Dimedici]

Except of course that the business does not actually use the trademark. Which suggests that it created its name for the purpose of giving it an excuse to register as a trademark the name used by Pinterest in the U.S..

Re:Weasfest

[Shimbo]

Nice try, but no. The UK startup was named "Premium Interest", so its a logical trademark.

However, it wasn't incorprated until April 2012.

Re:Weasfest

[DRJlaw]

From what the summary says, these people saw someone using the name for a US service and claimed the trademark in Europe before the US company could. This seems to me to be an exceptional example of abuse of the system.

This seems to be a perfectly ordinary example of how the system works. Especially in countries other than the United States (excepting select other Anglo/common law countries).

In most countries, trademark rights are protected through registration and awarded to the first to file to use the mark in that country. Trademark 'squatting' is as unexceptional as the sun rising in the east. Take China, for example.

The solution has been in existence for more than a century. The Madrid System allows someone who files for a trademark in their home country to also file an international application that creates, at a minimum, priority rights to the mark in each contracting country. The international application can serve as a common application for each designated member state, or can be transformed into individual trademark filings in each member state.

The Paris Convention also allows someone to file for the same trademark in almost any other country in the world within 6 months of when they first applied for the trademark elsewhere. If they do, that application will be treated as if filed on the first filing date. The downside is that you have to file individual trademark applications rather than a single international application.

Pinterest took neither route. Not only that, Pinterest didn't file an application to register its trademark anywhere before these people did. See here:.

The company Premium Interest filed the trademark PINTEREST in the European Union, 2 months before Pinterest filed its US trademark.

Whether out of desperation or sheer gall, Pinterest essentially argued that its business in the US somehow gave it prior trademark rights in Europe. See the same article:

Since the OHIM systematically rejected all the evidence as the evidence concerned the use of the mark in the US and not in the UK, Pinterest lost the opposition.

Summary for the TL;DR crowd: Disruptive internet startup presumed that it could claim worldwide trademark rights by registering a domain name and sorting out compliance with the law later. Startup was very wrong.

Re:Weasfest

[Rich0]

While this might be perfectly ordinary, it seems pretty dumb in design. It made more sense back in the days where few companies were global.

Having separate namespaces by country doesn't really make all that much sense these days. I'll agree that creates all kinds of jurisdictional problems, but the status quo just seems like a recipe for a mess. Does it really make sense for a couple of kids in a garage trying to start a business to have to register their name in every country that exists just in case they take off?

Re:Skydrive is changing name? When?

[ledow]

Forgotten how to use Google?

http://www.zdnet.com/the-guessing-game-begins-over-skydrives-new-name-7000022744/

Re:Skydrive is changing name? When?

[Anonymous Coward]

Because they don't want to call it Colbertdrive.

Like what Budweiser did back then...

[Anonymous Coward]

Funny that this happens also the other way round (EU-based company taking over a trademark of a US-based company in a hostile manner).

You probably don't know, but in the 19th century the Czech brewery Budweiser was exporting its lagers to the US. However, they didn't register the trademark (probably didn't know about it back then). And voila, Anheuser-Busch within 10 years registered the US trademark and started to make "beer" that was completely unlike the original (dating back to 13th century). Biggest audacity happened then in the '90s when they tried to squeeze out the original Czech brewery out of European market. As a consequence, EU banned the US Budweiser from ever using this name in Europe. You can get the original Budweiser/Budvar under then name Czechvar in the US nowadays.

Cheers!

Re:Like what Budweiser did back then...

[gnasher719]

In the UK, both companies sell their product as Budweiser.

One of them sells beer.

Re:Like what Budweiser did back then...

[Bing Tsher E]

I can't imagine anybody in Europe wanting to buy or drink the US-branded concoction known as Budweiser 'beer.'

Company Name Says It All

[Frosty Piss]

UK company Premium Interest ...

Troll.

Re:Skydrive is changing name? When?

[ArbitraryName]

"Metro style UI" was originally how it was referred to.
http://blogs.msdn.com/b/b8/archive/2012/05/18/creating-the-windows-8-user-experience.aspx
http://blogs.msdn.com/b/b8/archive/2011/08/31/designing-for-metro-style-and-the-desktop.aspx

Happened to us too

[mattbee]

A US startup called "Bytemark" started trading in the UK (my hosting company has been around since 2002). Like an idiot I asked them to please change their name because it could cause some confusion. Until then I'd not considered trademark issues, and we finally filed for a trademark of our own. Of course they filed 2 weeks before us, after I'd sent my polite request. So 2 years and about £20,000 later (only finished just last month) we defeated their objection to our trademark at a hearing, and the trademark office gave us full rights over the name. If it hadn't gone that way we could have been harassed into changing our 10-year old brand name, especially if we'd gone into any new areas of business.

My takeaway from that is that if I start another business I'll take on registration of the UK, EU & possibly US trademark as a given before launching. But when you're just starting out, it is (at best) thousands of pounds that could really be put to better use.

Re:Skydrive is changing name? When?

[rwa2]

The site that gave birth to the "Nailed It!" meme: http://www.pinterestfail.com/

Premium Interest is too long a name anyway

[Forever Wondering]

Probably why they trade marked pinterest (3 syllables) vs "Premium Interest" (6 syllables). But, legalities aside [even if Pinterest is forced to change its name], the term pinterest is already poisoned for use by Premium Interest. The market already associates the term with pinterest.com. Trying to use it for another company is just adding an additional burden on Premium Interest.

Premium Interest appears to be a muddled/watered down version of reddit (2 syllables). (P)Interestingly, on the premiuminterest.com page, they have a "like" button called "Pi Score".

The smart (entrepreneurial/business/non-lawyering) way out for everybody: Sell the trademark to pinterest. Change premiuminterest.com to piscore.com (2 syllables).

Even without the trademark flap, "Premium Interest" is a lousy name for a business. Barry Diller changed askjeeves.com to ask.com. Everybody remembers Google but [virtually] nobody remembers AltaVista. Lycos? The exception that proves the rule, I guess ...

Time will tell whether Alex Hearn is half as savvy a businessman as Diller.

Re:Good

[Chrisq]

Yet another compelling argument against private property. We need COMMUNISM!

Gosh I'm convinced. If only Marx, Lenin, Mao, or Trotsky had such a compelling argument. I'll be voting Communist next election.