Pinterest Inc v Premium Interest Ltd & Anor [2015] EWHC 738 (Ch) (24 March 2015)

Pinterest Inc v Premium Interest Ltd & Anor [2015] EWHC 738 (Ch) (24 March 2015)

It is acte clair that registration of a Community Trade Mark confers no positive right to use that mark and does not provide a defence to a claim for passing off or unfair competition. The balance of justice, considering commercial certainty and the relative speed of English proceedings, weighs against granting a stay pending the outcome of OHIM opposition proceedings.

Citation
[2015] EWHC 738 (Ch)
Parties
Claimant: Pinterest, Inc.; First Defendant: Premium Interest Limited; Second Defendant: Alex Hearn
Jurisdiction
England and Wales
Judgment Date
24 March 2015
Procedural Posture
Civil (intellectual Property Passing Off) / Interlocutory Applications: Strike Out/summary Judgment and Application for Stay
Outcome
Pinterest's application to strike out/for summary judgment on the pleaded defence that CTM registration is a defence to passing off is granted. The Defendants' application for a stay of proceedings is refused.
Legal Topics
Passing Off, Community Trade Mark Regulation, Stay of Proceedings, Summary Judgment, Trade Mark Rights
Intellectual Property Civil Procedure Passing Off Community Trade Mark Regulation Stay of Proceedings Summary Judgment Trade Mark Rights

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Parties

Pinterest, Inc.

Claimant

Premium Interest Limited

First Defendant

Alex Hearn

Second Defendant

Procedural Posture

Civil (intellectual Property Passing Off) / Interlocutory Applications: Strike Out/summary Judgment and Application for Stay

Legal Issues

  1. 1 Whether registration of a Community Trade Mark confers a positive right to use the mark and provides a defence to a claim for passing off
  2. 2 Whether English proceedings should be stayed pending the outcome of OHIM opposition proceedings

Ratio Decidendi

It is acte clair that registration of a Community Trade Mark confers no positive right to use that mark and does not provide a defence to a claim for passing off or unfair competition. The balance of justice, considering commercial certainty and the relative speed of English proceedings, weighs against granting a stay pending the outcome of OHIM opposition proceedings.

Court Disposition

Pinterest's application to strike out/for summary judgment on the pleaded defence that CTM registration is a defence to passing off is granted. The Defendants' application for a stay of proceedings is refused.

Orders

  • Paragraphs of the Defence asserting CTM registration as a defence to passing off are struck out.
  • Proceedings are not stayed pending OHIM opposition outcome.