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Tuesday, 10 March 2015

Pinterest "pinning it down" in OHIM Appeal

In the wake of all the exciting EPO news, here is some equally exciting trade mark news ...

It was widely reported when OHIM in 2013 rejected social media outlet Pinterest Inc’s opposition to the registration of the trade mark PINTEREST by Premium Interest, a UK online news aggregation site. 
 
Pinteresting...?
Upon Pinterest’s appeal, OHIM has now rendered its appeal decision in Pinterest’s favour (Case R0102/2014/2 of 2 March 2015 [not yet available on the OHIM database, but you can read it here]), which will be of interest to those opponents that base their opposition on unregistered rights, as Pinterest did, and in particular businesses that provide internet based services.  This decision will also be interest to those parties to that have unsuccessfully tried to obtain a second extension of time at OHIM in an opposition or other inter partes proceeding.

What had happened?   Premium Interest had filed its CTM application for PINTEREST in classes 41 and 45 on 31 January 2012 before Pinterest itself had filed any national European or Community trade mark applications.

In opposing Premium Interest’s application, Pinterest thus had to go down the unregistered rights route and base its opposition on Article 8(4) CTMR and unregistered rights, i.e. passing off in the UK. Despite Pinterest presenting a variety of evidence, OHIM took the view that, whilst Pinterest was clearly well-known in the US when Premium Interest had filed its CTM application, its evidence did not show “more than local significance” in the UK.  Most significantly, OHIM was reluctant to accept evidence relating to Pinterest’s goodwill insofar as this evidence was based on an affidavit by Pinterest’s in-house lawyer providing OHIM with estimated UK visitor figures to the website and account signups from the UK from March 2010 to January 2012. The Office explained that the affidavit was not sufficiently supported by evidence from external and independent sources. OHIM also did not believe the blogposts and media articles from the US and the UK, which called Pinterest the “next big thing” were enough to show the economic dimension of the mark. 

Pinterest
To make things even more complicated, Pinterest changed their legal representatives during the proceedings and had requested several extensions of time to file evidence in support of its opposition and had asked for some its information to be kept confidential.  The first extension was granted, the second one was not even though Pinterest’s new counsel contacted OHIM stating it had only just been appointed and not received all documents and thus required a second extension.  OHIM merely granted a few days to 4 December 2012, corresponding to the equivalent number of days which remained until the extended deadline had expired.  Pinterest submitted evidence before that deadline, which OHIM did take into account, but also submitted further evidence later, including at a later stage in the proceedings in August 2013 to substantiate its earlier rights. 

After OHIM rejected the opposition Pinterest appealed to OHIM’s BOA and filed a round of interesting and unusual arguments as to why OHIM should have granted additional time in “exceptional circumstances”, that it had discretion in this regard which had been “reduced to zero” and should have considered the “belated evidence” citing, inter alia, the CJEU’s Centrotherm cases (C-609/11 P, C-610/11 P), Protivital C-121/12 P and Protiactive C-122/12P), and perennial favourite Arcol aka the Kaul case (C-29/05). It also filed – at appeal stage - additional evidence from third party auditing firms corroborating Pinterest’s in-house counsel’s affidavit and the user and sign up information data Pinterest had provided, as well as of UK companies that signed up to the service prior the filing of the opposed application.

Premium Interest disagreed and in its submission, inter alia, contended that OHIM was right to reject the user and sign up information contained in the affidavit, that the witness statements provided by the third party auditors, submitted only at appeal stage and supporting this data were “irrelevant” and that Pinterest itself “had no idea whatsoever” how many accounts and users it had so that there was no objectivity with regard to the figures. Premium Interest further stressed that OHIM rightfully rejected evidence submitted outside the time frames set by OHIM and that Pinterest had certainly failed to show exceptional circumstances that would have allowed a second extension.

In its Appeal decision, OHIM now agreed with Pinterest and annulled the opposition decision, sending the case back to OHIM’s opposition division for re-examination taking into account the evidence filed before the Opposition Division, “which was incorrectly not taken into account, as well as the additional evidence filed before the Board”.

Pinterest also submitted several documents for the first time before the Board of Appeal, namely a second witness statement by Pinterest’s in-house counsel again providing estimated internet visitor figures to the Pinterest website from the UK and the EU and explaining that two independent third parties (accountant auditors) were asked to audit the visitor figures in order to strengthen the reliability and/or objectivity of the figures.

The BOA then referred to the time limit rule 19 CTMIR and explained that the opponent had to submit within the time-limit sufficient evidence to prove use of its non-registered earlier mark of more than local significance in the United Kingdom.  The BOA also stressed that Article 76(2) CTMR grants the Board a wide discretion to decide whether or not to take new evidence into account.  Agreeing therefore with Pinterest, the BOA explained that the criteria of this discretional power had been defined in several decisions, including ‘PROTI SNACK’ (C-120/12 P), CENTROTHERM’ (C-610/11 P Centrotherm), ‘FISHBONE’ (C-621/11 P) and ‘ARCOL’ (13.03.2007, C-29/05 P, Arcol).

The BOA also stressed that Rule 50(1) expressly confirmed that the Boards of Appeal enjoy, when examining an appeal against a decision of the Opposition Division, the discretion to decide whether or not to take into account additional or supplementary facts and evidence which were not presented within the time limits set or specified by the Opposition Division (see C-120/12 P, Proti Snack at para 32).
“Taking such facts or evidence into account is particularly likely to be justified where the Board considers, first, that such evidence is, on the face of it, likely to be relevant to the outcome of the proceedings and, second, that the stage of the proceedings at which the submission of new evidence takes place and the circumstances surround it do not argue against such matter being taken into account”.
Premium Interest
Applying this guidance the BOA found that Pinterest had adduced various pieces of evidence within the time-limit and believed in good faith that it was sufficient to substantiate its claims.  The new evidence filed in the course of the appeal proceeding has been filed in order to address the Office’s concern of the objectivity of the data submitted by Pinterest’s in-house lawyer in his witness statement. Here the BOA confirmed that such an affidavit may be taken into consideration if is it corroborated by other evidence external to the interested party (see T-303/03, Salvita).  Further, the BOA may also take into account additional evidence which “merely supplements other evidence submitted within the time-limit, where the initial evidence was not irrelevant, but was held to be insufficient”. Here, the BOA found that the opponent had intended to strengthen and/or clarify the content of the initial evidence with its additional advice.

When “evaluating all the evidence together”, the BOA concluded that “upon a preliminary examination, the additional evidence submitted by the opponent before the Opposition Division after the time-limit and the additional evidence filed before the Board are, “on the face of it, likely to corroborate and confirm claims and information which had already been provided in due time before the Opposition Division”: i.e in the observations, and other documents provided by the opponent, especially [the in-house counsel’s] affidavit, that the earlier non-registered mark PINTEREST was used in the course of trade of more than local significance in the United Kingdom by Pinterest.  Since this “evidence may be relevant to the outcome of the opposition”, and “there are no circumstances that clearly argue against taking the addition evidence into consideration” the BOA annulled the Opposition Division’s original decision and sent the matter back for a fresh assessment including this evidence.

It will be interesting to see what the Opposition Division will make of it. The fact that the BOA has accepted Pinterest’s supplemented evidence concerning its user figures in the context of showing goodwill at appeal stage will come as welcome news to internet based businesses, where success can often come fast and almost unexpected and before all IP is properly in place.

For the sake of transparency, Pinterest was represented by Baker & McKenzie in the appeal where this Kat used to work when the appeal was filed.

6 comments:

Anonymous said...

Useful to have a link to the decision - but why has this ex Bakers' Kat posted a link to the decision sent not to Bakers but to the other side's representatives ??

Anonymous said...

It's all about discretion - nothing unusual in that and it was the only ground of appeal open to Pinterest. Sounds like whoever prepared and filed the evidence for Pinterest at opposition level did a pretty Herculean job ! And effective too since that timescale and evidence were key to the appeal being successful. A useful and interesting case certainly but a big takeaway is that newly appointed representatives cannot rely on extensions being granted simply because they are new to the case.

Jeremy said...

Anonymous of 10:21: it was not Birgit who posted that link, but I. It was the only copy I had and I couldn't work out how to detach the cover letter from the rest of the pdf.

Shane Curcuru said...

For all of the mark holders out there who rely on our counsel to explain the details to us... isn't this post really about the legal details of how OHIM handles the specific steps of a case, and not really about the "real world" rights or effect of trademark ownership and use?

Working on trademark policy with a non-profit that has a lot of unregistered marks, the lesson I take away here as a rightsholder is:

- Registering your marks is the best defense. I'm presuming that if Pinterest Inc. had registered their mark in either the EU or UK beforehand, that this would either never have come up, or would have granted them a much much easier case.

- Contesting trademark registrations from the point of view of an unregistered mark holder can be extremely difficult and expensive.

Question, for those willing to answer either here or offline: If Pinterest, Inc. had held a US trademark registration for the mark beforehand, would that likely have materially affected this case? Or does Europe not care about us colonials that much when it comes to registrations?

Thanks! Love the Kat!

- Shane

Birgit Clark said...

@Shane Owning a trade mark registration makes the enforcement of your rights easier but trade marks are territorial creatures, and esepcially for start up it is often difficult to decide where to file a trade mark and when. Sucess can come quickly but it may also never come, it is as much a business decision as it is a legal decision. Owning a trade mark in another jurisdiction is usually not of much help since the marks are valid in a specific country, "territoriality" of a trade mark. Hope this helps.

Anonymous said...

@Birgit - trade marks are territorial of course but claiming priority from the first tm application in another jurisdiction can be a key part of an effective tm strategy even / especially for start ups where budgets tend to be tight. Unless - as here - a competitor sees the potential first or ahead of a business decision to file and pre-empts the start up which then has a big problem...

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