SOUNDGRAM not confusingly similar to INSTAGRAM or GRAM, confirms High Court

In-depth analysis

The High Court has rejected Instagram's appeal against a decision of a hearing officer of the UK IP Office to register the trade mark SOUNDGRAM in the name of EE&T Limited. The case shows the difficulties in challenging a decision of the tribunal.

What has happened?

EE&T (later substituted as respondent to the appeal by Meta 404 Limited) applied to register the UK trade mark SOUNDGRAM for various services in class 38 such as the "electronic transmission of streamed media content" which includes pictures, audio and user-generated content.
Instagram opposed the application based on its earlier registrations for INSTAGRAM and GRAM, relying on a likelihood of confusion and unfair advantage/detriment (sections 5(2)(b) and 5(3) of the Trade Marks Act 1994). The specifications of services for the Instagram marks were identical to that of the SOUNDGRAM mark.
The Hearing Officer upheld the opposition on both grounds. He found that the INSTAGRAM and GRAM marks were similar to the SOUNDGRAM mark only to a low degree and that, while INSTAGRAM had a medium to high level of inherent distinctiveness, GRAM had only a low degree of inherent distinctiveness. He concluded that the differences between the GRAM / INSTAGRAM marks and the SOUNDGRAM mark were sufficient that, even allowing for the "concept of imperfect recollection" and the significant reputation of the INSTAGRAM mark, there was no likelihood of consumers being confused, directly or indirectly, into believing that relevant services sold under the SOUNDGRAM mark would be those of Instagram or an undertaking linked to Instagram.
Instagram relied only on the INSTAGRAM mark for the purposes of its reputation-based claim. The Hearing Officer held that the INSTAGRAM mark had a reputation in relation to its renowned photo/video sharing and editing services, software application and social network. However, the only point of similarity between the INSTAGRAM and SOUNDGRAM marks was the element GRAM which the Hearing Officer held to be of low distinctiveness, and so there was no "link" or even any "bringing to mind".
Instagram appealed the decision to the High Court. The appeal was before Mr Justice Richards who, despite seemingly having some sympathy with Instagram's arguments, dismissed the appeal in its entirety because he was not satisfied that the Hearing Officer's conclusions were "plainly wrong".
The case shows the significant difficulties in challenging a decision of the tribunal. Appeals are not re-hearings, and an appeal court must not interfere with the tribunal's conclusions unless it is satisfied that they are "plainly wrong". It does not matter if the appeal court considers that it would have reached a different conclusion. What matters is whether the decision under appeal is one that no reasonable judge could have reached. It is therefore critical that parties submit all their arguments and evidence before the Hearing Officer.

Want to know more?

Instagram appealed against the decision of the Hearing Officer on the following grounds, all of which were dismissed by the High Court.

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.

Instagram argued that the word "gram" would primarily be understood as a unit of mass which has nothing to do with telecommunications services. However, the judge held that it was reasonable for the Hearing Officer to consider other uses of the word "gram" such as suffix uses (for example, "telegram" which is allusive of telecommunications services). It was open for the Hearing Officer to conclude that the GRAM mark therefore had a low degree of inherent distinctiveness.

In relation to enhanced distinctiveness through use, the judge confirmed that the Hearing Officer was not bound to conclude that a material proportion of the relevant section of the public used the word "gram" to refer specifically to Instagram's products so as to give the GRAM mark enhanced distinctiveness. Instagram criticised the Hearing Officer's approach to the evidence which included dictionary evidence (consisting of editions of the Cambridge English Dictionary and the online Urban Dictionary that gave the meaning for the noun "gram" as referring to Instagram) and media evidence (consisting of examples of the word "gram" being used in the media to describe Instagram). The judge held that the Hearing Officer had considered the evidence but had concluded that it was "far from convincing". To disturb the Hearing Officer's evaluative conclusion on enhanced distinctiveness, Instagram was required to show that the only reasonable conclusion that could be drawn from the evidence was that the mark GRAM had enhanced distinctiveness through use. The judge was not persuaded that Instagram had satisfied this high hurdle.

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.

Some arguments advanced under this ground depended on ground 1 succeeding (which it did not). For example, it was said that the GRAM mark was so significant and distinctive that it necessarily followed that the SOUNDGRAM mark was similar to at least a medium degree to both the GRAM and INSTAGRAM marks.

Instagram criticised the Hearing Officer for not explaining what he considered to be the dominant and distinctive characters of the two marks. This was rejected by the judge, who held that this was not necessary, and the Hearing Officer's overall conclusion and reasons were clear from reading the decision as a whole. Instagram was criticised for unduly picking over the words of the decision and a failure to read the decision as a whole.

Instagram argued that the prefix "Sound" in the SOUNDGRAM mark was allusive of telecoms services within the specification for that mark and as such greater dominance and distinctiveness should be given to the “-gram” suffix with a corresponding effect on the assessment of similarity. Although the judge held that this was a perfectly good and respectable argument to make, that of itself was not sufficient to demonstrate that the Hearing Officer's conclusion was unavailable to him.

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.

The judge viewed this ground as an attempt to re-argue the factual case on appeal. Ultimately, the Hearing Officer expressed 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. Although Instagram's arguments suggested that there were plausible grounds on which the Hearing Officer might have made a different decision, the judge was not satisfied that the decision he did make was "plainly wrong" or weakened by any error of principle.

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.

Since each of grounds 1 to 3 failed, ground 4 failed as well.

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

Instagram argued that the Hearing Officer allowed his conclusions on the lack of similarity between the INSTAGRAM mark and the SOUNDGRAM mark to dominate and that he ignored other relevant considerations such as the degree of renown of the INSTAGRAM mark and its medium to high level of distinctiveness. The judge rejected this argument.

Instagram also argued that the Hearing Officer did not refract his perceptions through the prism of the “average consumer”. Had he done so, he would have concluded that Instagram users formed a sizeable constituency of possible users of services labelled with the Soundgram mark and, for that constituency, the INSTAGRAM mark would certainly be brought to mind.

The judge agreed that the proposition that the SOUNDGRAM mark would not even "bring to mind" the INSTAGRAM mark is one that some readers of the Hearing Officer's decision might not instinctively agree with, however that did not of itself make the decision he did reach "perverse". The Hearing Officer was entitled to find that the two marks were similar to a low extent and that low similarity was clearly a relevant consideration in determining whether the SOUNDGRAM mark would "bring to mind" the INSTAGRAM mark.

In this case, there were suggestions throughout the judgment that the judge did have some sympathy with Instagram's arguments. He even admitted that it would not be surprising if a different tribunal could have come to a different conclusion from the Hearing Officer on an apparently similar question. However, he was not satisfied that the way the Hearing Officer had weighed all the various matters in the balance was "plainly wrong". He therefore dismissed the appeal in its entirety.