If, like me, you spend any time social networking, maybe sharing a new recipe or checking out a new gadget or car. Then you may have heard of Pinterest – the fast growing US photo sharing website that lets you and others pin photographs to a virtual board.
What you might not know, is Pinterest have lost their claim to a trademark in Europe.
Instead the EU trademark court ruled in favor of the current owners, a UK news site called Premium Interest who filed their TM in January 2012.
Pinterest will no doubt be appealing the decision, but since they can’t give any more evidence, we doubt the decision will change.
What can entrepreneurs learn from this?
1) Trademarks are national or territorial in character
Just because Pinterest has a US trademark, it doesn’t mean they have any rights or necessarily a prior claim in other countries. The only way to make sure you have defendable trademark rights is to register in countries where your business will be active.
In court Pinterest tried to claim unregistered rights in the EU by giving evidence of notoriety in the US and evidence of media publications. “Time magazine listed Pinterest in its "50 Best Websites of 2011"
But this gave no evidence that they were known by EU consumers and so was dismissed entirely. For unregistered rights, you have to show evidence of being known in that country. You can't just jump in head first and expect to be ok!
So watch out Pinterest, we don't think thats the last of their problems, as Alex Hearn (Premium Interest founder) has similar registered trademark rights in Australia.
2) First to register is normally the winner
May as well blow the final whistle. Games pretty much over.
Pinterest was slow to register in the US waiting until March 2012, while Premium Interest filed their EU Trade Mark (also known as a Community Trade mark) 2 months before!
If Pinterest had filed in the US before Premium Interest filed in the EU, then Pinterest would have had 6 months to file in the EU and claim priority.
3) Early trademark registration reduces risk
The early bird catches the worm.
It’s simple, early registration avoids the risk of a total rebrand or paying licensing fees in the future:
As Premium Interests lawyer Adam Morallee and founder Alex Hearn says “Pinterest will have to change their name if they don’t get a licence from him,”
Could have saved themselves a lot of hassle if they had applied sooner.
Don't make their mistake!