Is Insta the only gram?
Instagram has lost an appeal challenging the registration of the word mark "Soundgram" as a UK trade mark in Class 38.
Software developer EE&T Ltd filed the trade mark application for "Soundgram" for services such as the “electronic transmission of streamed media content”, including pictures, audio, and user-generated content, in July 2020. In February 2022 the mark was assigned to Meta404 Ltd.
Instagram opposed the application based on two word marks: the UK registered trade mark INSTAGRAM and EU trade mark GRAM (the opposition was filed prior to the end of the Brexit transition period). The specifications were identical to that of the Soundgram mark.
Hearing Officer decision
The UK IPO Hearing Officer found that the average consumer would be the “general public including businesses” and would pay “above average” attention to their purchase. He also found that the GRAM mark could not benefit from enhanced distinctiveness through use, as the average consumer would be used to seeing "gram" used as a suffix.
Instagram had cited an edition of the Cambridge English Dictionary which defined the noun “gram” as referring to the Instagram social media platform or to a photograph/post on the platform. Instagram also put forward evidence for the noun being used in the media as referring specifically to the Instagram platform, including a transcript from the Graham Norton Show where a guest said a drawing by his daughter will “go on the gram”. This was said to be an overt reference to Instagram.
But the Hearing Officer dismissed this evidence, stating that the Cambridge English Dictionary definition was “undated” and that the transcript was computer-generated, thus varied “in accuracy due to speaker dialect and audio quality issues”. Overall, he found the evidence arguing that gram suggested a shortened version of Instagram was “unconvincing”.
He therefore rejected the opposition under Section 5(2)(b).
Instagram also opposed the application based on Section 5(3), based only on the INSTAGRAM mark. But the Hearing Officer said this claim also failed: “To my mind the marks in suit will not form a link as they are so different that they do not rise even to the ‘bringing to mind’ stage.”
Appeal not a re-hearing
In his judgment, Mr Justice Richards upheld all of the Hearing Officer’s main findings.
In particular, he found that it was reasonable for the Hearing Officer to consider other users of the word “gram”. He added:
“To disturb the Hearing Officer’s evaluative conclusion on ‘enhanced distinctiveness’, Instagram must show that the only reasonable conclusion that can be drawn from the evidence is that the mark GRAM had enhanced distinctiveness through use. I am not persuaded that Instagram has satisfied that high hurdle.”
He also supported the Hearing Officer’s finding that the INSTAGRAM and Soundgram marks were similar to a low degree. He did not consider that Instagram’s argument that “Sound” is allusive of telecoms services “was so strong as to compel the conclusion that the two marks were similar to a medium to high degree”.
In finding that the average consumer would pay an above-average degree of attention, the Hearing Officer “was expressing an evaluative conclusion going to the likelihood that an ordinary member of the public making a purchase for consumption or domestic use would be confused by use of the Soundgram Mark”. While there were plausible grounds on which he might have reached a different decision, his actual decision was not plainly wrong or vitiated by any error of principle, said Richards J.
Finally, on the question of “bringing to mind”, the judge said:
“The proposition that the Soundgram Mark would not even ‘bring to mind’ the INSTAGRAM mark is one that some readers of the Decision might not instinctively agree with … However, even if the Hearing Officer could permissibly have reached a contrary conclusion, that does not of itself make the decision he did reach ‘perverse’.”
What does this mean?
First, it is clear that UK IPO Hearing Officers do not spend a lot of time on social media.
More relevantly, this case provides some important lessons for parties appealing Hearing Officer decisions. While the judge clearly had some sympathy for Instagram’s arguments, he also said that on some points the company was seeking to re-argue the factual case rather than appeal the Hearing Officer’s findings. Once again, this shows the importance of ensuring that all evidence filed in opposition proceedings is as comprehensive as possible.
Further, even if some of Instagram’s arguments were strong and convincing, that did not prove that the Hearing Officer’s findings were “plainly wrong”. Moreover, the different conclusion reached by the EUIPO concerning an application to register ANYGRAM was not surprising, given that such cases involve “multifactorial evaluations”.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - firstname.lastname@example.org