Pinterest’s Trademark Blunder: How IP Neglect Cost This Start-up

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The American start-up Pinterest now has a $10-billion valuation and has raised millions over the past five years to grow its world-famous brand. Its management has certainly made some wise moves during this time, but its neglect of intellectual property (IP) law is not among them. This is because, in failing to register its trademark globally, it has lost the rights to use the name Pinterest in promotions in Europe to a little-known media outlet called Premium Interest.

Asleep at the Pinwheel
Trademark rights are territorial, which means that it applies only to the country you register it in. Therefore, if you have plans to go global, you should check if the name you’re currently using is in use elsewhere in the world. Moreover, you need to be the first to file the trademark for that word, at least in that particular industry (unless the brand is as large as McDonald’s or Nike). Neither of these occurred to Pinterest, which started operations in 2010 but registered its trademark only in March 2012.

Fastest Finger First
It was still first to file in the US, but it lost the race in Europe. That’s because in London, in January 2012, a start-up called Premium Interest had trademarked the same name in all of Europe. This should not have been, because, by this time, Pinterest was already a large company with global interests. Just 18 months later, in fact, it raised a whopping $225 million to fund its international expansion plans. While they did try to fight Premium Interest off, by showing that it was present in Europe before Premium Interest, the courts did not find any merit in its claims. Moreover, it was reportedly slow to even present this evidence. This means that Pinterest cannot use its own name in any promotional features it runs in Europe.

While Premium Interest’s CEO has shown sympathy, he has also made it clear that he won’t be giving up the rights to the name. And why should he, right? Pinterest, through its neglect, chose not to trademark the name. A trademark can seem insignificant while you’re just starting out, but choosing not to do so, at least after your brand gains traction, can be a foolish move.

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Vakilsearch's resident expert on starting up, compliance and accounting, he holds a Masters in Accounting and an LLB.

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