Pinterest is a photo-sharing website where users can upload and pin and save images onto pin boards so that they can manage events and interests. Pinterest Inc USA have been using the trade mark PINTEREST since 2010 but did not file a Community Trade Mark application until 2012.
On 31 January 2012, a UK based company Premium Interest Limited, filed a Community Trade Mark application for the mark PINTEREST in classes 41 and 45, covering services including education, entertainment and personal and social services rendered by others to meet the individual needs of individuals.
Pinterest Inc. opposed the application and as they did not have any registered rights, they relied on Article 8(4) CTMR. This Article provides that non-registered trade marks used in the course of trade of more than mere local significance can be invoked in an opposition.
Pinterest Inc. filed evidence to show that they are well known in EU. Pinterest filed their evidence following two extension of time requests. The second request was refused and some of the evidence was filed outside of the time limit. The late filed evidence was not taken into account by the Opposition Division.
The Opposition Division rejected the opposition and held that the evidence filed within the time limits did not show any indication of use or knowledge of the mark by the relevant public in the UK. Therefore, the evidence did not show use of more than local significance in UK. The majority of the evidence filed showed the success of Pinterest in US.
Pinterest appealed the decision and as well as arguing that the evidence filed did show that Pinterest had generated goodwill in the UK, they argued that the late filed evidence should be taken into account due to "exceptional circumstances", which included that Pinterest changed representatives a few days before the evidence deadline. Pinterest also filed additional evidence in the appeal proceedings to substantiate their rights. The additional evidence showed the number of visitors to the Pinterest website from UK and EU and the number of UK Pinterest users registering their accounts.
The Board of Appeal has discretion to decide whether or not to take new evidence into account. The Board held that the initial evidence filed by Pinterest was not irrelevant and that the late filed evidence was meant to supplement the initial evidence and strengthen or clarify the initial evidence.
The Board held that the Opposition Division was incorrect in refusing to take the late filed evidence into account and have sent the case back to the Opposition Division for re-examination which should take into account all of the evidence filed before the opposition division and the additional evidence filed in the appeal proceedings.Posted by: in: Case Law, Digital/Tech, Trade Marks