The growth of Pinterest as a global force in online social media has come across a major bump in the road with the company struggling to trademark its name in Europe.
In the past year the popularity in Pinterest has rocketed, not only in the US where it was first based, but also across Europe and the rest of the world.
Now the company are looking to trademark their name but have run into trouble in Europe where the name has already been registered by another user.
According to a report in the Telegraph the Pinterest trademark is currently registered to Alex Hearn, a social news aggregator based in London. Alex Hearn has held the trademark since 2012 and at this time Pinterest had not even established a presence in Europe or trademarked its name in the US.
Judges have ruled in favour of Alex Hearn holding his trademark for Pinterest based on the fact that the brand is not yet well known enough in Europe to hold the name itself.
The lawyer who represented Alex Hearn and his company Premium Interest told TechCrunch: “Pinterest will have to change their name if they don’t get a licence from him” and now also has to pay the court costs of €300.
This may not be the end of the story though for Pinterest who are able to appeal the ruling against them. The company will be able to fight the case if they are able to prove that Pinterest was known in Europe before Alex Hearn made his trademark claim.
However the lawyer for Alex hearn believes that this will actually not be possible by Pinterest because of the very complex rules that apply to appeals at the European Office for Harmonisation of the Internal Market.
He said: “To win the case they have to show they had rights before Premium Interest in Europe. OHIM refused that on the basis of the evidence put forward. The fact they are well known in the U.S. is not relevant. What matters is their rights in Europe. And they didn’t have any at the relevant time.”
A spokesman from Pinterest said about the case: “We expect to win on appeal because the Pinterest mark was, in fact, already famous and overwhelmingly associated with our service in Europe and throughout the world when Premium Interest filed its application.”
“We submitted extensive evidence of fame in goodwill in the UK and the EU, but the OHIM rejected that evidence on the ground it didn’t come from a neutral source. That requirement was legally improper and we expect that mistake to be corrected on appeal.”
The lesson that can be learnt from the entire debacle is that trademarks should be one of the first, and not the last, thing that a growing social media company should be looking at.