The social media network Instagram LLC appealed a decision from the Hearing Officer at the IPO to register the word mark SOUNDGRAM as a trade mark in Class 38 in the name of EE&T Ltd.

The Hearing Officer had rejected Instagram’s opposition to the registration under ss 5(2)(b) and 5(3) of the Trade Marks Act 1994 based on its own UK registered marks for INSTAGRAM and GRAM.

In relation to s 5(2)(b), the Hearing Officer found that the INSTAGRAM mark and the SOUNDGRAM mark were only similar to a low degree, as although both marks ended with the suffix GRAM, the first five letters of each mark were completely different. He also found that GRAM and SOUNDGRAM were only similar to a low degree. In his view, the word GRAM was often used as the second element of a mark to refer to a message and was not just seen as a reference to a unit of weight. Therefore, contrary to Instagram’s argument, GRAM only had a low degree of inherent distinctiveness. Instagram also argued that GRAM had acquired distinctiveness through use, but the Hearing Officer was not convinced by the evidence.

As for the likelihood of confusion, the Hearing Officer found that, while the INSTAGRAM mark had a medium to high level of inherent distinctiveness that benefitted from enhanced distinctiveness through its considerable use, considering his findings on the distinctiveness of the GRAM mark, the differences between GRAM and INSTAGRAM on the one hand, and SOUNDGRAM on the other, were so great that, even allowing for the “concept of imperfect recollection” and the significant reputation of INSTAGRAM, there was no likelihood of consumers being confused, directly or indirectly, into believing that relevant services sold under SOUNDGRAM would be those of Instagram or an undertaking linked to Instagram.

As for s 5(3), the Hearing Officer found that there was no link between SOUNDGRAM and INSTAGRAM or even any “bringing to mind” because the only point of similarity between the marks was the GRAM element, which was of low distinctiveness.

The SOUNDGRAM mark was subsequently assigned to Meta 404 Ltd, which was substituted as the respondent to Instagram’s appeal.

On appeal, Instagram argued that the Hearing Officer had erred “in principle” in failing to recognise: (i) the at least average inherent distinctiveness of the GRAM mark; and (ii) that the GRAM mark had acquired an enhanced distinctive character through use in relation to telecoms services. Instagram argued that these errors had led the Hearing Officer to the wrong conclusions on the degree of similarity and the likelihood of confusion.

Instagram argued that the GRAM mark had at least average inherent distinctiveness since it was in no way descriptive of telecommunications services. It also said that GRAM had acquired distinctiveness through use.

Mr Justice Richards rejected both arguments, finding that, when considering inherent descriptiveness, the Hearing Officer had been entitled to consider suffix uses of GRAM, such as “telegram”, which is allusive of telecoms services. As for acquired distinctiveness through use, Richards J found that it was reasonable for the Hearing Officer to conclude, on the evidence, that a material proportion of the public did not use the word “gram” to refer to Instagram’s products such as to give the GRAM mark acquired distinctiveness.

Instagram also argued that the Hearing Officer had erred in concluding that GRAM and INSTAGRAM were only similar to SOUNDGRAM to a low degree by failing to consider what the distinctive and dominant elements of the marks were.

Comparing GRAM and INSTAGRAM, Richards J said that the Hearing Officer did not have to specifically set out the dominant and distinctive characters of the marks in his Decision, as his overall conclusion and reasoning were clear from reading the Decision as a whole. Further, by finding only a low degree of similarity between the marks, the Hearing Officer had not found that the identical element, GRAM, was so negligible as to be ignored. Instead, he had concluded that the combination of “insta” and “gram” resulted in a “different conceptual unit”. Richards J also found that, while Instagram’s argument that the prefix “Sound” in the SOUNDGRAM mark was allusive of telecoms services and therefore gave greater dominance and distinctiveness to the “gram” suffix such that the degree of similarity was higher than the Hearing Officer had found, was a “perfectly good and respectable argument”, it was not so strong as to compel the Hearing Officer to find that INSTAGRAM and SOUNDGRAM were similar to a medium/high degree.

As for the comparison between GRAM and SOUNDGRAM, in addition to the arguments already dealt with, Instagram said that it was “unbalanced” for the Hearing Officer to conclude that the suffix “gram” was allusive of a form of messaging without also finding that “sound” was allusive of telecoms services. It argued that if “gram” was allusive of “messaging” then the Hearing Officer should have found that SOUNDGRAM was largely descriptive of an audio message service resulting in a high degree of similarity through use of “gram” in both marks.

Richards J disagreed, finding that it was not incumbent on the Hearing Officer to set out a “balanced” account of the evidence by setting out all factors that weighed both for and against his conclusion. His task was, in part, to set out an overall evaluative conclusion on similarity that considered, even if it did not expressly mention, all the evidence presented to him.

Instagram also argued that the Hearing Officer had erred in finding that the average consumer would pay an above-average degree of attention when making a purchasing decision.

Richards J rejected this, finding that the argument was an attempt to re-argue the factual case on appeal. The Hearing Officer’s findings were based on a perception as to how ordinary members of the public would behave when downloading apps. While it was understandable for Instagram to consider that the position was more complicated and that different categories of the public might pay different amounts of attention, ultimately the Hearing Officer had expressed an evaluative conclusion on whether an ordinary member of the public would be confused by the use of SOUNDGRAM. There were therefore plausible grounds on which the Hearing Officer might have made a different decision, but they did not show that he had been “plainly wrong”.

As for s 5(3), Instagram argued that, in addition to its points on similarity between INSTAGRAM and SOUNDGRAM (that had already failed), the Hearing officer had placed too much emphasis on the lack of similarity between the marks, ignoring other relevant considerations, such as the degree of renown of INSTAGRAM and its medium to high level of distinctiveness. Further, it said, the Hearing Officer had not made his findings based on what the average consumer would think, i.e. the possible users of a service labelled SOUNDGRAM, to whom the INSTAGRAM mark would certainly be brought to mind. Finally, Instagram said, the Hearing Officer’s findings were “perverse”.

Richards J found that the Hearing Officer was not obliged to repeat his findings on the distinctiveness of INSTAGRAM when ruling on the “link” or “bringing to mind” issue. Further, Instagram’s appeal argument was different to the way it had been put to the Hearing Officer, which had not depended on identifying Instagram’s own customers as a separate constituency of the “average consumer”.

As for the “perverse” argument, Richards J found that while readers of the Hearing Officer’s Decision might instinctively disagree that SOUNDGRAM would not even “bring to mind” the INSTAGRAM mark, even if the Hearing Officer could permissibly have reached a contrary conclusion, that did not of itself make his decision “perverse”.

Richards J concluded that the Hearing Officer was entitled to find that INSTAGRAM and SOUNDGRAM were only similar to a low extent, which was also a relevant consideration in determining whether SOUNDGRAM would “bring to mind” the INSTAGRAM mark. Once that was accepted, he said, the question became how much weight should be given to the low similarity of the marks as compared with the identical nature of the services in question and the distinctive character and reputation of the INSTAGRAM mark? Overall, he was not satisfied that the way the Hearing Officer had balanced those matters was “plainly wrong”. This conclusion was not altered by the fact that in ANYGRAM TM (Opposition No B2828898) the Opposition Division of the EUIPO had concluded that use of “Anygram” would take unfair advantage of the distinctive character and repute of INSTAGRAM. The questions in this appeal involved multifactorial evaluations and it was not surprising, therefore, that a different tribunal could have come to a different conclusion from the Hearing Officer on an apparently similar question.

The appeal was dismissed. (Instagram LLC v Meta 404 Ltd [2023] EWHC 436 (Ch) (3 March 2023) — to read the judgment in full, click here).