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UK Company Successfully Claims Ownership of "Pinterest" Trademark 133

Posted by samzenpus
from the a-rose-by-any-other-name dept.
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."
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UK Company Successfully Claims Ownership of "Pinterest" Trademark

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  • Where is that stated anywhere?
  • Use it or lose it (Score:4, Insightful)

    by ShanghaiBill (739463) on Sunday January 05, 2014 @04:30PM (#45872793)

    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.

    • by Anonymous Coward on Sunday January 05, 2014 @04:51PM (#45872929)

      I know nothing about UK law...

      There's your problem right there!

      • by Anonymous Coward

        Doesn't seem there is much reason to learn it if they accept trademark laws like these.

        • Re: (Score:2, Funny)

          by Soluzar (1957050)
          You're right of course, we should all use American law. Just as God intended. Many apologies to our noble American overlords.
          • by Threni (635302)

            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.

          • by Kadin2048 (468275)

            Well they are registered in the .com TLD, which is basically United States namespace, so it would make sense that US trademark law would apply at least in terms of the domain name. I doubt some European company would be able to convince a US court to order Verisign to turn over the domain to them.

            So at worst, I would think that Pinterest could continue to operate under the "Pinterest.com" domain name; the challenge would be whether they want to advertise in the European market, which might be prohibited wi

            • by mysidia (191772)

              So at worst, I would think that Pinterest could continue to operate under the "Pinterest.com" domain name; the challenge would be whether they want to advertise in the European market, which might be prohibited without changing their name.

              Pinterest themselves doesn't have to do business in Europe. They can create a separate company in Europe -- business partner that will perform an "Ad placement business"; place ads, transfer the funds (sans a commission) to pinterest.

          • We forgive you. Please report to the nearest Combustion chamber for summary execution, and have a wonderful day!
    • by salmacis2 (643788)

      "I know nothing about UK law..."

      So why are you commenting then?

      "...but in the USA"

      How is USA law remotely relevant?

    • by LihTox (754597)

      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.

      If that were necessary, then the company would have simply thrown some crappy placeholder website and called it Pinterest. So it wouldn't have made much difference.

  • Weasfest (Score:5, Interesting)

    by Nerdfest (867930) on Sunday January 05, 2014 @04:44PM (#45872883)

    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 (Score:5, Informative)

      by DRJlaw (946416) on Sunday January 05, 2014 @08:20PM (#45874323)

      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. [cnn.com]

      The solution has been in existence for more than a century. The Madrid System [wipo.int] 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 [wipo.int] 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: [markmatters.com].

      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: [markmatters.com]

      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.

      • by AmiMoJo (196126) *

        Sigh. Another bullshit story about China. I notice there are no actual examples of names that were trademarked, just vague references to companies it allegedly happened to.

        Chinese companies are trying to child their own brands. They want to do what the Japanese food with names like Panasonic, Sony, Toshiba, NEC, Honda, Toyota, Sharp, Square-Enix, Capcom etc.

        Sometimes Chinese brands have similar, but not identical names. Even that is no an attempt to confuse per-se. You have to understand that in China some

        • by DRJlaw (946416)

          Actual example:

          Tesla [globaltimes.cn]

          I'm not going to spend unpaid time doing your research (for which I'm quite certain you don't actually want the results that you'll find) for you. Examples are legion. Deal with it.

          • by AmiMoJo (196126) *

            That story seems like bullshit. One example of one obviously idiotic guy who never sold anything. The site quickly vanished and the trademark could easily be disputed. It reminds me of Mike Ro Soft in the US.

            The other example it gives is Apple which was a case of the Chinese company legitimately owning the trademark and using it themselves long before Apple came along. Other examples cited by various low grade news sites include the Ferrari horse which is apparently similar to a department store logo, again

      • by Fnord666 (889225)
        Premium Interest should file a claim and get granted the domain name pinterest.com in a counter suit.
      • by Rich0 (548339)

        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 th

  • Why can't they just continue using the name let the people in EU access the .com site? This very well be a silly question, but I see this kind of thing come up once in a while and I've never been able to figure out the answer. There are no borders in the internet, so is there a reason they have to cater to this? If so, why hasn't some country like China simply done that for whatever US company it suddenly doesn't like or wants to screw over?

    • by knobboy (113080)

      I was wondering the same thing. I understand why some services might brand with different regional domains, but some services don't seem to make sense to use anything other than the .com.

  • by Anonymous Coward on Sunday January 05, 2014 @05:10PM (#45873047)

    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!

    • "As a consequence, EU banned the US Budweiser from ever using this name in Europe" Balls. I can buy it in English supermarkets. Did you mean The Czech authorities banned it (before they joined the EU who have trade agreements that would preclude that from happening)?
      • by Anonymous Coward

        I recall seeing it in France under the 'Bud' moniker instead of the full Budweiser.

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

      • by Kadin2048 (468275)

        I believe it is called "Bud", "Bud Light", etc., while the Czech company uses the "Budweiser" name.

        And even that was contentious [latimes.com].

    • by jonbryce (703250)

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

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

        One of them sells beer.

        • That's not very fair on Budweiser; their product still tastes like beer... just beer that's already been through someone else.
    • I will never understand this line of reasoning. A big American corporation did this terrible thing in the past, and so somehow it's now ok if British company does the same thing? Weren't you just saying that it was wrong for them to do it? It seems like you started your argument by stating that you are definitely on the wrong side of it.

      • A big American corporation did this terrible thing in the past, and so somehow it's now ok if British company does the same thing?

        Not his point. At all.

      • by Chrisq (894406)

        I will never understand this line of reasoning. A big American corporation did this terrible thing in the past, and so somehow it's now ok if British company does the same thing? Weren't you just saying that it was wrong for them to do it? It seems like you started your argument by stating that you are definitely on the wrong side of it.

        its funny I hear the same thing all the time regarding Islam. Sure they kill people just for their beliefs, but so did the Catholics in the crusades so its fine!

    • See also Havana Club rum and their trademark dispute with Bacardi, who claimed it in the US (with a little anti-Cuban US government help, of course).

  • by Frosty Piss (770223) * on Sunday January 05, 2014 @05:10PM (#45873051)

    UK company Premium Interest ...

    Troll.

  • Happened to us too (Score:4, Interesting)

    by mattbee (17533) <matthew@bytemark.co.uk> on Sunday January 05, 2014 @07:07PM (#45873829) Homepage

    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.

    • by Builder (103701)

      You run bytemark ? I keep meaning to give you some money. You guys seem to provide a good product at reasonable prices with good support - I hope you continue for a long time to come!

    • by Rich0 (548339)

      It would make a lot more sense to get rid of per-country trademark registrations and move to a central database of some sort. I just don't see how proper names shouldn't simply be global.

      The main probably is obviously that there are just too few short proper names out there. We could require that all company names be at least 30 characters long in order to not discriminate.

  • by anatoli (74215)

    I propsose they take the name "Shminterest". Can swap my rights to it for a modest stash of Queen's portraits.

  • by Forever Wondering (2506940) on Monday January 06, 2014 @01:31AM (#45875981)

    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.

  • plan one.. guys with billy clubs and rubber hoses to get this conflict "resolved" properly with the smart ass lawyers.

    plan two.... get a new name, change your branding, and sink "pinterest.com" so deep in porn links it becomes utterly toxic and blocked by all the new UK porn filters!

  • by Mr_Silver (213637)

    Microsoft is changing the name of Skydrive because it infringes the trademark of British broadcaster BSkyB, normally known as Sky.

    Before everyone gets up in arms, it's worth pointing out that Sky Television (which is where "Sky" got its name from) was created in 1980 and merged with British Satellite Broadcasting in 1990 to form the company known as British Sky Broadcasting or, more simply, Sky. The company not only does TV but broadband and VoD as well.

    In comparison, SkyDrive was developed and launched by

  • another example is "Yellow pages", the original name for NIS [wikipedia.org] that was changed because British Telecom PLC owned the name "Yellow Pages" as a registered trademark in the United Kingdom. As a legacy many of the commands start with yp, for example ypinit, ypserv, etc.
  • by Arkiel (741871)
    Maximum rule, minimal equitability.
  • I was disappointed to find that the cat photos on pinterest do not display the depth of understanding of the human condition that the thought provoking plays of the great Harold Pinter so brilliantly illustrate.

"Mach was the greatest intellectual fraud in the last ten years." "What about X?" "I said `intellectual'." ;login, 9/1990

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