Instagram, LLC v Meta 404 Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Richards,Judge Jonathan Richards |
| Judgment Date | 03 March 2023 |
| Neutral Citation | [2023] EWHC 436 (Ch) |
| Docket Number | Case No: CH-2022-000038 |
| Court | Chancery Division |
[2023] EWHC 436 (Ch)
Mr Justice Richards
Case No: CH-2022-000038
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(APPEAL FROM THE UNITED KINGDOM
INTELLECTUAL PROPERTY OFFICE,
TRADE MARKS REGISTRY)
Rolls Building
Fetter Lane
London, EC4A 1NL
Jeremy Reed KC (instructed by D Young & Co LLP) for the Claimants
The Respondent in person
Hearing date: 9 February 2023
Approved Judgment
I direct that no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
This judgment was handed down remotely at 10am on 03 March 2023 by circulation to the parties or their representatives by email and by release to the National Archives.
Judge
The appellant company (“Instagram”) is well known as a provider of a photo/video sharing service and social media network. Instagram appeals against a decision of George Salthouse, a hearing officer of the UK Intellectual Property Office (the “Hearing Officer”), made on 25 January 2022 (the “Decision”). By the Decision the Hearing Officer decided to register the word mark “Soundgram” as a trade mark (the “Soundgram Mark”) in Class 38 notwithstanding Instagram's opposition.
EE&T Limited (“EE&T”) was the applicant before the Hearing Officer and the Soundgram Mark was initially registered in EE&T's name. However, on 15 February 2022 EE&T assigned the Soundgram Mark to Meta 404 Limited. Both parties were agreed that Meta 404 Limited should be substituted as respondent to Instagram's appeal under CPR 19.2(4). I made an order accordingly at the beginning of the hearing.
The decision of the Hearing Officer
It is not necessary to set out the entirety of the Hearing Officer's findings and I therefore summarise them only as necessary to put into context Instagram's grounds of appeal. In the remainder of this decision, references to numbers in square brackets are to paragraphs of the Decision unless I specify otherwise.
The filing date for the application to register the Soundgram Mark was 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 ss5(2)(b) and 5(3) of the Trade Marks Act 1994 (the “Act”) which provide, so far as material, as follows:
Relative grounds for refusal of registration .
…
(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.
(3A) Subsection (3) applies irrespective of whether the goods and services for which the trade mark is to be registered are identical with, similar to or not similar to those for which the earlier trade mark is protected.
It is common ground that the INSTAGRAM and GRAM marks were “earlier trade marks” for the purposes of s5(2)(b) and s5(3).
The Hearing Officer's conclusions on s5(2)(b)
Instagram relied on both Instagram Marks for the purposes of its opposition under s5(2)(b). There is no challenge to the finding of the Hearing Officer ([28] to [32]) that the specifications for the Instagram Marks were “identical” to that of the Soundgram Mark.
The focus in the appeal against the Hearing Officer's decision on s5(2)(b) 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.
At [16] and [17], the Hearing Officer analysed the characteristics of the “average consumer” of the respective parties' goods and services and the manner in which that average consumer would make purchasing decisions. The Hearing Officer concluded that the average consumer would be the “general public including businesses”. He concluded that the average consumer would pay “above average” attention to their purchase and explained that conclusion as follows:
The services sought to be registered are, broadly speaking, telecommunications services. In my opinion, the average consumer for these services will be the general public including businesses. Turning now to the level of attention the average consumer will display when selecting the services, I accept that, for the most part, the cost of the services will vary considerably, but bearing in mind that the average consumer will wish to ensure they are selecting the correct type of service which works with their phone and other hardware, they will pay an above average level of attention when selecting the services so as to ensure they meet their criteria. I therefore find that relevant average consumers will pay an above average degree of attention when selecting the services at issue. The services in question are likely to be selected from brochures or advertisements, on-line and in person at premises such as high street shops. Some may be self-selected or purchased on-line or by phone with little if any discussion with the provider. However, some may well be purchased only after technical assistance is provided which will require a discussion to determine the precise nature of the service required. Considered overall, the selection process is likely to be, initially, predominantly a visual one, although I accept that aural considerations will play a role in the selection process.
At [18] to [23], the Hearing Officer considered the similarity of the Instagram Marks to the Soundgram Mark. At [22], he considered the INSTAGRAM mark. He concluded that it was similar to the Soundgram Mark to a low degree. He noted that both marks ended with the suffix “gram” but that the first five letters of the two marks were completely different, concluding (with the emphasis being that of the Hearing Officer):
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.
At [23], the Hearing Officer considered the similarity of the GRAM mark to the Soundgram Mark. Instagram had, in its submissions to the Hearing Officer, placed emphasis on the proposition that the word “gram” had, at the very least, an average level of inherent distinctiveness for the type of telecommunication services that were at issue since “gram” did not describe, or allude to, telecoms services. Instagram went further, arguing that the GRAM mark had a high degree of acquired distinctiveness. It pointed, for example, to an edition of the Cambridge English Dictionary and the online Urban Dictionary (the “Dictionary Evidence”) that gave a meaning for the noun “gram” as referring either to the Instagram social media service, or to a photograph or post put on the Instagram social media platform. It bolstered that case, by putting forward evidence of the word “gram” being used in the media, on its own, as a badge of origin to describe the Instagram platform specifically rather than social media platforms generally. A flavour of that evidence (the “Media Evidence”) can be seen from just three items on which Instagram relied:
i) In 2017, Craig David MBE released a song called “For the Gram” described in an online Vibe post as involving him chanting “about his Instagram activities and [describing] all the etiquette involved in producing the best pics for Instagram”.
ii) On 19 February 2020, the Sun newspaper published an online article under the headline “FORE THE GRAM The 15 most Instagrammed courses in the world … and you can play on one for just £50”.
iii) A (computer generated) transcript from the Graham Norton Show indicated that one of the guests had said that a drawing made by his 3-year-old daughter will “go on the gram” which was said to be a plain reference to Instagram.
The Hearing Officer referred to this evidence at [8]. He expressed no conclusions in that paragraph, although he appears to have had some reservations about aspects of it stating, for example, that the extract from the Cambridge English Dictionary was “undated” and that the transcript from the Graham Norton Show was accompanied by a “warning” that, being computer generated, its text “will vary in accuracy due to speaker dialect and audio quality issues”.
[23] of the Decision was concerned with an assessment of the similarity of the GRAM mark and the Soundgram Mark. However, that paragraph also contains some assessment relevant to Instagram's case on “distinctiveness”:
23...
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