Trade Mark – Brand ProtectionInstagram, LLC v Meta 404 Limited

Introduction

A recent decision by the UK High Court provides clarity to the existing legal principles and highlights certain areas for trade mark protection.

Instagram, LLC v Meta 404 Limited

The UK High Court of Justice Chancery Division on 3 March 2023 dismissed the appeal filed by the appellant company (Instagram) against the decision made by the UK Intellectual Property Office where it allowed EE&T Limited to the word mark “Soundgram” as a trade mark.

Background

EE&T Limited filed the the application to register the Soundgram Mark on 28 July 2020. The specification for the Soundgram Mark covered various services within Class 38 such as the “electronic transmission of streamed media content” which included pictures, audio and user-generated content.

Instagram was the proprietor of a UK registered trade mark numbered UK00003123325 (“INSTAGRAM”) that was registered on 15 January 2016. Instagram was also the proprietor of an EU trade mark number 017632729 (“GRAM”) registered on 23 March 2019. Both of those marks are word marks. Instagram based its opposition on those two marks (together the “Instagram Marks”) relying on sections 5(2)(b) and 5(3) of the Trade Marks Act 1994 (the “Act”) which provide, so far as material, as follows:

(2) A trade mark shall not be registered if because

(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

(3) A trade mark which—

(a) is identical with or similar to an earlier trade mark, and

…

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

The focus in the appeal was against the Hearing Officer’s is as to his evaluative conclusions as to (i) the degree of “similarity” between the Instagram Marks on the one hand and the Soundgram Mark on the other and (ii) the existence or otherwise of a “likelihood of confusion”.

Those issues themselves rely on other evaluative conclusions as to the characteristics of the average consumer and the distinctiveness (whether inherent or acquired) of the Instagram Marks which Instagram also challenges.

The Hearing Officer concluded that the average consumer would be the “general public including businesses”. The Hearing Officer further concluded that Instagram mark and the Soundgram mark are similar to a low degree: “Visually and aurally they have identical endings but completely different beginnings and so must be considered to be similar to a low degree. To the best of my knowledge neither has any meaning and so there cannot be a conceptual comparison. Overall the marks are similar to a low degree.”

Instagram appealed against the Decision on the following grounds:

Ground 1 – The Hearing Officer erred in his assessment of the distinctiveness of the GRAM mark. That mark had at least average inherent distinctiveness. There was cogent and compelling evidence that this mark had acquired a secondary meaning of denoting the telecom services of the trade mark’s proprietor and none other.

Ground 2 – The Hearing Officer erred in concluding that the GRAM and INSTAGRAM marks were similar to the Soundgram Mark only to a low degree.

Ground 3 – The Hearing Officer’s determinations as to the characteristics of the average consumer and the degree of attention that the average consumer would pay to a purchasing decision were flawed.

Ground 4 – The Hearing Officer’s errors under all or any of Grounds 1 to 3 led him to make a flawed finding that the requisite “likelihood of confusion” for the purposes of 5(2)(b) of the Act was not present.

Ground 5 – The Hearing Officer erred in finding that the Soundgram Mark would not even bring to mind the INSTAGRAM mark when considering s5(3) of the Act.

The Court rejected all the Grounds and dismissed Instagram’s appeal.

Ground 1 –

The focus of Ground 1 is that the Hearing officer erred in principle in failing to recognise (1) at least average inherent distinctives of the GRAM mark; and (2) that the GRAM mark had through use acquired an enhanced distinctive character in relation to the telecommunications services.

‘Inherent distinctiveness’ – there is an inverse relationship between “descriptiveness” and “distinctiveness” in the sense that the more descriptive a mark is of goods or services, the less distinctive it is likely to be. Instagram’s case was that the word “gram” will primarily be understood as a unit of mass which has nothing to do with telecommunications services. Therefore, reasons Instagram, the GRAM mark must have had at least average inherent distinctiveness since it is in no way descriptive of telecommunications services.

Further, the Court was not satisfied the only reasonable conclusion that the Hearing Officer can draw from the evidence is that the mark GRAM had enhanced distinctiveness through use.

The Court considered that the Hearing Officer was not bound to conclude that such a material proportion of the relevant section of the public used the word “gram” as referring specifically to Instagram’s products as to give the GRAM mark enhanced distinctiveness. The Hearing Officer could reasonably have formed the view that the Dictionary Evidence and the Media Evidence was not sufficient to underpin such a conclusion. Ground 1 was dismissed.

Ground 2 –

The Court rejected Instagram’s argument that use of the prefix ‘sound’ was so strong as to compel the conclusion that the two marks were similar to a medium to high degree. Further, the Court did not consider that it was incumbent on the Hearing Officer to set out a “balanced” account of the evidence in the sense of having to set out all factors that weighed both for and against his conclusion. The Hearing Officer’s task was, in part, to set out an overall evaluative conclusion on “similarity” that properly took into account, even if it did not expressly mention, all the evidence presented to him.

Ground 3 –

The court considered that this Ground is in reality, an attempt to re-argue the factual case on appeal. As the Court was satisfied that the decision made by the Hearing Officer was plainly wrong or vitiated by any error of principle, the Court rejected this Ground.

Ground 4 –

Since each of Grounds 1 to 3 has failed, this Ground was rejected as well.

Ground 5 –

Alas the forceful argument made by Instagram, the Court considered that the Hearing Officer could permissibly have reached a contrary conclusion than the argument propounded by Instagram, and hence it did not make the Hearing Officer’s decision perverse. Accordingly, this Ground was rejected.

Key Takeaways

This case provides clarification and guidance on how the legal principles for trade mark protection should be applied. Future applications concerning similar facts (regardless of the size of the opponents) can be evaluated under similar criteria.

Alfred Leung, Partner (E: alfredleung@hkytl.com; T: 852 3468 7202)