Pinterest Inc v Premium Interest Ltd & Anor

Registration of a Community Trade Mark confers a negative right to exclude others, not a positive right to use the mark. It does not provide a defence to a claim for passing off or unfair competition. The scheme of the Community trade mark regime permits concurrent national proceedings concerning earlier rights and opposition proceedings before OHIM. A stay is discretionary and requires the court to balance justice between the parties. Although avoiding duplication and wasted costs favours a stay, earlier commercial certainty, settlement prospects and the relative duration of proceedings may justify allowing the national claim to proceed.

Pinterest used PINTEREST for online social-networking services. Premium Interest had applied to register the same sign as a Community Trade Mark and had opposed Pinterest’s application. Pinterest brought proceedings for passing off and applied to strike out or obtain summary judgment on a defence asserting that registration would confer a complete defence. Premium Interest applied for a stay pending determination of the opposition proceedings before OHIM.

The court had to determine whether Community Trade Mark registration created a positive right to use the mark or defeated an earlier passing-off claim, and whether the English proceedings should be stayed while the opposition proceedings continued.

1. The court treated the Defendants’ Community Trade Mark application as a threat to use the mark, making 31 January 2012 the relevant date for the quia timet passing-off claim. The first strike-out issue therefore fell away when the Defendants accepted that point.

2. Registration of a Community Trade Mark confers no positive right to use the mark. Intellectual property rights are negative rights to exclude others. Loose references to a proprietor’s right to use a mark do not alter that analysis. Article 9 of the Council Regulation 207/2009/EC and Article 17 of the Charter did not produce a different result.

3. Articles 110 and 111 of the Regulation preserve national-law claims concerning earlier rights and permit the proprietor of an earlier local right to oppose use of a Community Trade Mark where national law allows. Accordingly, registration would not provide a defence to Pinterest’s passing-off claim. The approach in Inter Lotto UK Ltd v Camelot Group plc and Lumos Skincare Ltd v Sweet Squared Ltd was applicable, and a reference to the CJEU was unnecessary because the issue was acte clair.

4. There was an imperfect but useful analogy with concurrent national and European patent proceedings. The principles in IPCom GmbH & Co KG v HTC Europe Co Ltd required consideration of all relevant circumstances and the balance of justice. Duplication, wasted costs and the possibility that the English proceedings might become redundant favoured a stay. Against that were earlier commercial certainty in the UK, the possibility of settlement and the much shorter expected duration of the English proceedings.

5. The court declined to grant a stay. The English proceedings could provide commercial certainty in the UK substantially earlier than the opposition proceedings. The Defendants’ alleged financial disparity did not outweigh those factors, particularly in the absence of evidence that they could not afford to litigate.