The social-media scrapbook site filed an opposition to UK-based online news aggregator Premium Interest’s ‘Pinterest’ trademark in May 2012, following its publication in February of that year.
The trademark would be registered in classes 41 and 45, protecting the term in relation to education, training, entertainment, sporting and cultural, legal, security, and personal and social services.
Pinterest argued that its rights, specifically those it has gained during the course of doing business in the US, to use its name in the UK preceded those of Premium Interest, which is based in London.
But ruling in Premium Interest’s favour in November 2013, the Office for Harmonization in the Internal Market (OHIM) said that Pinterest had failed to show that it had used its name in the course of trade outside of the US prior to January 2012, when Premium Interest’s trademark was filed.
OHIM said: “The majority of the evidence that relates to the relevant period prior to the filing of the contested CTM ... merely mentions the name ‘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 ... 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.”
Pinterest can appeal against the decision, although it is facing oppositions to three of its own ‘Pinterest’ CTMs from Premium Interest, which were stayed pending the outcome of this case.