Simon Bennett, partner and Rachel Cook, associate Fox Williams LLP

Social media companies are some of the biggest growth businesses out there and the very nature of their businesses is global. One of the stronger performers is Pinterest, which offers an online platform to manage images and other content on an online pinboard. As recently as October 2013 it was reported to be valued at USD 3.8 billion. It has also had some success in stopping others from using the name or variations of it in the USA.

Europe is, however different. A recent ruling from the European Trade Mark Registry has caused Pinterest a headache. Pinterest, which had been founded in March 2010, applied to register Pinterest as a trade mark in the European Union in February 2012. However, a UK company, Premium Interest Limited had already applied for a trade mark for Pinterest in January 2012.

Pinterest opposed this application relying on its earlier use of Pinterest it probably thought that it would easily win. However, the European Union Trade Mark Registry rejected the opposition. The big issue? While Pinterest could produce evidence showing that it had significant use in the US, it had failed to show sufficient earlier use in the European Union to prevent Premium Interest Limited’s trade mark application from proceeding. Without this the opposition failed.

What next? Pinterest can appeal, but proof of earlier rights is a factual issue and if the European Trade Marks Registry did not consider that Pinterest had put in enough evidence to show earlier rights in Europe it will be difficult to put in further evidence as the Appeal process only allows fresh evidence in exceptional circumstances. This leaves Pinterest potentially liable for trade mark infringement in the European Union for using the name of its business. No claims can be made until Premium Interest’s mark proceeds to registration and the appeal process in Europe can take between 2 – 5 years so Pinterest may have time on its side at least.

The other options are for Pinterest to either buy or take out a licence for the mark, but this is likely to have a high price tag. Pinterest may, however have little choice – a business, particularly an online social media business, can’t trade under one name in one country and another in another country. At best impracticable – at worst impossible. But how practical is a rebrand at this stage?

The moral of the story is that Pinterest could have avoided all these issues if it had applied to register its trade mark in Europe earlier. A month can be a very long time in the world of trade marks!