Pinterest, Inc. v Premium Interest Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Mr Justice Arnold: |
| Judgment Date | 24 March 2015 |
| Neutral Citation | [2015] EWHC 738 (Ch) |
| Docket Number | Case No: HC-2014-000614 |
| Court | Chancery Division |
| Date | 24 March 2015 |
[2015] EWHC 738 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Rolls Building
Fetter Lane, London, EC4A 1NLL
The Hon Mr Justice Arnold
Case No: HC-2014-000614
Mark Vanhegan QC (instructed by Baker & McKenzie LLP) for the Claimant
Michael Edenborough QC and Chris Aikens (instructed by Brandsmiths) for the Defendants
Hearing date: 16 March 2015
Further written submissions 16, 18 March 2015
This is a dispute over the trade mark PINTEREST. The Claimant ("Pinterest") is currently using the trade mark in relation to a social networking website and to applications. The First Defendant ("Premium Interest"), or more accurately its predecessor in title, applied to register the trade mark as a Community Trade Mark shortly before Pinterest did. As a result, there are cross-oppositions pending before the Office for Harmonisation in the Internal Market (Trade Marks and Designs). Furthermore, Pinterest has brought a claim in this Court for passing off against Premium Interest. Pinterest alleges that the Second Defendant, Alex Hearn, who is Premium Interest's sole shareholder and director, is jointly liable for such passing off. There are two applications before me. First, Pinterest has applied to strike out, alternatively for summary judgment dismissing, two issues raised by the Defendants' Defence. Secondly, the Defendants have applied for a stay of these proceedings pending the final determination of its CTM application.
The following account of the factual background is derived primarily from the parties' statements of case, supplemented by evidence filed by the parties on the stay application.
Pinterest is a provider of online and mobile social networking services through its website and applications (for e.g. Apple iOS and Android mobile devices), specifically by providing an on-line tool which allows users to gather images and other content and organise them into themed collections. Each piece of content posted on Pinterest is known as a Pin. Users post content to Pinterest from their own collections or other websites by Pinning it to a themed collection called a board. As users browse the billions of Pins and boards available on Pinterest, they can Pin the content they find onto their own boards, and follow the users and boards they find most useful or inspiring. Pinterest therefore provides a way for people to express themselves, discover new things, and engage with the people who create them.
It appears that Pinterest established its business in late 2009. It registered the domain name pinterest.com on 26 November 2009 and a beta version of its website went live at www.pinterest.com shortly afterwards. A fully functional version of the website was launched in March 2010. Pinterest claims to have extensively promoted and marketed its services throughout the world, including in the United Kingdom, since March 2010. In particular, it claims that by January 2012 more than 11 million people had visited its website, making it the fastest ever standalone website to surpass 10 million unique visitors. It also claims that between March 2010 and 31 January 2012 there were approximately 396,000 UK visitors to the website, approximately 30,000 new accounts created by UK users of the website and approximately 91,700 copies of the iOS application downloaded by UK users to their mobile devices. It is common ground that in August 2012 the website was ranked by Experian Marketing as the third most popular social networking site behind Facebook and Twitter.
It is also common ground that Pinterest had been the subject of substantial media coverage in the UK, including articles in the Daily Mail, the Daily Telegraph, the Financial Times, The Guardian, The Independent and the International Herald Tribune by the end of January 2012. Pinterest claims that by the same date a number of substantial and prestigious UK businesses and organisations, such as Harrods and the Royal Shakespeare Company, had joined and maintained a presence on the website, with others following shortly afterwards.
Mr Hearn is an entrepreneur and inventor who has founded and run a number of businesses since 2002. In 2009 Mr Hearn set up AH Innovation Ltd ("AHI") as "an incubator for new projects up to the point where they are spun off into their own companies". According to the Defence, "[i]n or around 2010" Mr Hearn had an idea for a news aggregation platform that linked news with up to date trending information across the internet. News content would be displayed on the screen of a computer or mobile device. The news content displayed on the screen would be ranked by the platform not according to editorial choice, but according to the popularity of content viewed on the internet. A news story's ranking would be calculated using an algorithm. The application of the algorithm to a news story would result in a score. The higher the score, the further up the screen the story would be displayed, and the larger the content box that the story would be displayed in. At some point Mr Hearn decided to call this platform Premium Interest.
According to the Defence, "[a]t the end of 2010" Mr Hearn coined the term PINTEREST as a name for the score used to rank news stories on the platform by eliding the words PREMIUM and INTEREST. According to the Defendants' evidence on the stay application, however, Mr Hearn coined the term "[i]n or around December 2009". This inconsistency does not matter for present purposes.
The Defendants claim that AHI entered into an agreement with an unidentified third party to acquire the domain name premiuminterest.com in March 2011 and this domain name was transferred to AHI in May 2012. Premium Interest took over the business from its incorporation on 2 April 2012. From July 2012 to September 2014, or later, Premium Interest claims to have run a beta version of the news aggregation platform from its website at www.premiuminterest.com. Subsequently the Defendants put Premium Interest's business on hold pending the resolution of its dispute with Pinterest.
As I understand it, it is common ground that, to date, the Defendants have not in fact used the sign PINTEREST in the course of trade anywhere in the world.
It is admitted by the Defendants that, by 31 January 2012, Mr Hearn was aware of Pinterest's existence. The Defendants says that Mr Hearn's impression of Pinterest at that date was that it was a non-commercial, invitation-only fashion blog featuring images and documents with a geographical focus on the United States of America and no meaningful presence in the UK. He derived this impression from internet searches he had conducted for the name PINTEREST. Shortly before 29 January 2012 he joined Pinterest's waiting list, which was acknowledged by Pinterest in an email dated 29 January 2012.
On 31 January 2012 AHI filed Community Trade Mark Application No. 10,605,749 to register the word PINTEREST in respect of "education; providing of training, entertainment; sporting and cultural activities" in Class 41 and "legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals" in Class 45 ("the Defendants' CTM Application"). The Defendants' CTM Application was published on 8 February 2012. Shortly after 2 April 2012 the Defendants' CTM Application was assigned to Premium Interest.
On 10 February 2012 Pinterest filed Community Trade Mark Application No. 10,633,981 to register the word PINTEREST in respect of goods and services in Classes 9, 35, 38, 42 and 45 ("Pinterest's CTM Application").
On 8 May 2012 Pinterest filed Opposition No. B2,009,309 to the Defendants' CTM Application ("Pinterest's Opposition") contending inter alia that, under the English law of passing off, it had acquired an earlier right to the sign PINTEREST within Article 8(4) of Council Regulation 207/2009/EC of 26 February 2009 on the Community trade mark (codified version) ("the Regulation").
On 10 July 2012 Premium Interest filed Opposition No. B2,044,561 to Pinterest's CTM Application ("Premium Interest's Opposition") relying upon the Defendants' CTM Application as an earlier trade mark within Article 8(1)(a) and (b) of the Regulation.
On 22 October 2012 Mr Hearn wrote on behalf of Premium Interest to Pinterest. In the letter Mr Hearn explained about his idea for the Premium Interest news aggregation platform and his coinage of the term PINTEREST. Having referred to the OHIM oppositions and to trade mark applications filed by Premium Interest in Australia, Brazil, India, Japan, South Korea, Malaysia, New Zealand, Philippines, Russia and Turkey, and having acknowledged Pinterest's priority in relation to the USA, Mr Hearn proposed a geographical delimitation agreement between the parties.
On 16 November 2012 Pinterest's solicitors wrote to the Defendants in response to Mr Hearn's letter dated 22 October 2012 alleging passing off and threatening to apply for an injunction. The letter requested the Defendants to withdraw the Defendants' CTM Application, to withdraw Premium Interest's Opposition and to confirm that they would not use the trade mark PINTEREST by 30 November 2012.
On 28 November 2012 the Defendants' then solicitors replied denying passing off and stating:
"In any event, your threat to seek an injunction to restrain use of the Trade Mark is misplaced. Our clients have no intention to use the Trade Mark before the opposition period is concluded and registration granted. The appropriate forum for resolving the issues raised by your client is not a...
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R v (on the application of British American Tobacco UK Ltd and Others) v Secretary of State for Health
...not give a right to the proprietor to use, but give him the right to exclude others from using." 48 Arnold J said the same in Pinterest Inc v Premium Interest Ltd [2015] EWHC 738 (Ch), [2015] FSR 27 at [36], in which he said that the same principle applied to a CTM, and that the contrary w......