(P)interesting outcome as Board of Appeal refers PINTEREST dispute back for re-examination

European Union

Disputes concerning unregistered rights are rarely straightforward and are always “evidence heavy”. Collating and preparing evidence can be time consuming and the deadlines given in opposition proceedings (even when extended) may provide insufficient time for opponents to prepare evidence to the fullest extent needed to demonstrate the extent of unregistered rights.

In Pinterest Inc v Premium Interest Ltd (Case R0102/2014/2), the Second Board of Appeal of OHIM has given Pinterest Inc a lifeline in its well-publicised opposition to a Community trademark (CTM) application for PINTEREST (word).

In January 2012 Premium Interest Ltd, a London-based social news aggregator, filed a CTM application for PINTEREST in Classes 41 and 45 of the Nice Classification. Pinterest, a popular US-based social media business, opposed the application. The opposition was based on Pinterest’s earlier unregistered rights in the name PINTEREST under Article 8(4) of the Community Trademark Regulation (207/2009), Section 5(4) of the UK Trademarks Act 1994 and under the UK laws of passing off.

Pinterest filed two tranches of evidence on November 26 2012 and November 30 2012, respectively. This evidence was filed before the deadline given by OHIM. Surprisingly, on August 22 and 27 2013, significantly after the expiry of the evidence deadline, Pinterest submitted further evidence.

The Opposition Division rejected the opposition in its entirety, concluding that the evidence submitted by Pinterest was insufficient to prove that it has used PINTEREST in the course of trade of more than local significance. In reaching this conclusion, the Opposition Division disregarded the evidence filed by Pinterest in August 2013, relying upon Article 19(4) of the Community Trademark Implementation Regulation (2868/95), which states that OHIM shall not take into account written submissions or documents which have not been submitted within the time limit set by OHIM.         

Pinterest appealed, submitting that the Board of Appeal should re-consider the evidence in its entirety, including the evidence filed in August 2013.

Pinterest argued that the Board of Appeal had discretion to accept evidence outside certain time-limits if the evidence was relevant to the outcome of the proceedings and the supplemental evidence was clearly relevant. Thus, the Board of Appeal should duly exercise this discretion under Rule 19(4) of the Community Trademark Implementation Regulation, also citing the decisions of the Court of Justice of the European Union in Centrotherm (C-609/11 P, C-610/11 P) and Arcol (C-29/05 P), amongst others.

Pinterest succeeded on appeal, as the Board of Appeal 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”.

The Board of Appeal duly exercised its discretion in allowing the new evidence submitted before the board to be considered under Article 76(2) of the Community Trademark Regulation, and the late-filed evidence to be considered under Rule 50(1) of the Community Trademark Implementation Regulation. The Board of Appeal annulled the Opposition Division’s original decision and sent the matter back to the Opposition Division for re-examination.

This dispute is proving to be an interesting case for trademark practitioners and will provide further assistance to those seeking to persuade OHIM to accept further evidence after the existing deadlines have passed. It is quite startling that evidence submitted by Pinterest almost nine months after the expiry of the deadline is now admissible in its entirety. This decision undoubtedly dilutes the importance of deadlines and more worryingly may in fact pave the way for ‘flexible’ deadlines. OHIM’s reluctance to enforce deadlines may lead to major case management problems and potential prejudice to the parties involved.

With new evidence now to be considered, it will be (p)interesting to see the outcome following re-examination.

Nick Bolter and Martin Whittle, Cooley (UK) LLP, London

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