The High Court has recently declined to overturn a decision of the UK Intellectual Property Office (UKIPO) to register the trade mark "SOUNDGRAM" for services described as 'the electronic transmission of streamed media content', following an opposition from Instagram LLC, the well-known social network.
The case highlights the high threshold that an appellant must overcome to have the decision of a Hearing Officer reversed:
"It does not matter, with whatever degree of certainty, that the appeal court considers that it would have reached a different conclusion. What matters is whether the decision under appeal is one no reasonable judge could have reached."
Whilst the judge considered that Instagram's arguments suggested 'plausible grounds' for the Hearing Officer to have reached a different conclusion, the decision to reject the opposition was not one that was 'plainly wrong'.
Instagram owns UK and EU trade marks "INSTAGRAM" and "GRAM" registered for various goods and services, including in class 38 relating to telecommunications services. In 2020, Meta 404 (formerly EE&T) filed an application at the UKIPO for the trade mark "SOUNDGRAM" in class 38 in relation to services such as "electronic transmission of streamed media content". Instagram opposed the application on the basis that it was a similar mark for identical or similar goods and services and there was a likelihood of confusion by the public, or the use of SOUNDGRAM would take unfair advantage of the reputation of its earlier mark.
The UKIPO Hearing Officer rejected Instagram's opposition because the differences between the parties' marks were so great that, even allowing for the concept of imperfect recollection and Instagram's repute, there was no likelihood of consumers being confused into believing the services sold under the mark SOUNDGRAM would be linked to INSTAGRAM. Instagram appealed to the High Court.
It was undisputed that the services were identical, as both related to the electronic transmission of streamed media content – this meant that the key point to resolve was the degree of similarity between INSTAGRAM and GRAM, and SOUNDGRAM, and the existence or otherwise of a likelihood of confusion.
Instagram put forward a range of arguments that 'GRAM' (both as an independent mark, and as a constituent part of 'INSTAGRAM') had intrinsic distinctiveness, as there was no link between 'gram' and 'telecoms'. It further argued that 'GRAM' had acquired distinctiveness in its own right, relying on evidence such as:
- extracts from the Cambridge English Dictionary and the Urban Dictionary (defining 'gram' as slang for Instagram)
- the song 'For the Gram', in which Craig David sings about his social media exploits
- a transcripted interview from the Graham Norton Show where a guest refers to something 'go[ing] on the gram'.
The Hearing Officer held however that the marks were only similar to a low degree, and that the GRAM mark had neither inherent nor acquired distinctiveness: 'gram' is often used as a suffix to indicate messaging (such as in telegram), so was not intrinsically distinctive and he was unconvinced that Instagram's evidence showed that a material proportion of the population used the word in this way such that there was acquired distinctiveness.
On the basis there was neither intrinsic nor acquired distinctiveness, the Hearing Officer found there to be low similarity between the marks, meaning the average consumer was unlikely to associate the marks so there was no risk of confusion. Further, no unfair advantage was being taken as 'SOUNDGRAM' did not call to mind 'INSTAGRAM'.
Instagram appealed on a number of grounds, and the High Court reviewed the decision. The judge emphasised that the Hearing Officer's decision would only be set aside if 'rationally unsupportable'. Whilst the judge noted that Instagram's oppositions were 'respectable, or even strong', he was not satisfied that the decision of the Hearing Officer was plainly wrong, as assessments of similarity and reputation are multifactorial, and the relevant factors were considered in a meticulous and proper fashion.