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Businesses need to plan ahead and consider future markets for their trademarks.

The popular photo-sharing website PINTEREST.COM (“Pinterest”) failed to secure trademark rights in Europe in November 2013 when the Office for Harmonization in the Internal Market (“OHIM”) determined that a U.K.-based business, Premium Interest Ltd. (“Premium”) was entitled to the registration of the PINTEREST trademark.

Thumbtacks in cork board

OHIM operates similarly to the Canadian Trade-mark Office, and publishes a trademark application for third-party (public) opposition once it receives preliminary approval.  In this case, Premium filed a trademark application on January 31, 2012.  Pinterest had been operating since about 2010.  After receiving notice of the Premium application, Pinterest opposed the application on the basis that it had become well-known in Europe prior to the application.  Due to its familiarity, Pinterest argued that it had gained common law rights within the European community and would have been entitled to the trademark ahead of Premium.

In Canada we have a similar provision which allows extra-jurisdictional entities (i.e. companies or persons from outside Canada) who have become sufficiently famous and identifiable to the Canadian consumer to acquire the right to apply for a trademark.  The application is based upon the trademark “becoming known” in Canada, despite not having any direct market presence within the country itself.

Pinterest lost its case, primarily because OHIM determined that while Pinterest had been operating since about 2010, it had done so primarily in the US and had not become sufficiently known in the European community as of the date of the Premium application (2012).  Therefore, Premium was entitled to its registration.

This case highlights the importance of businesses to consider future markets, including distant international markets, as they expand and grow.  It may be prudent to file “proposed use” trademark applications in other jurisdictions just in case the business expands.  In most jurisdictions, a proposed use application can secure a priority date for a particular trademark for 3-5 years and offer protection against new applications in the meantime.

For more information on trademarks, contact me.

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