Trade Marks - Instagram LLC v Meta 404 Ltd

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Jane Lambert

Chancery Division (Mr Justice Richards) Instagram LLC v Meta 404 Ltd [2023] EWHC 436 (Ch) (3 March 2023)

This was an appeal by Instagram LLC ("Instagram") against Mr Salthouse's decision to allow E E & T Limited's application to register SOUNDGRAM as a trade make for various services in class 38 to proceed to grant (see Instagram LLC v EE & T Limited. BL O/060/22 22 Jan 2022), Following Mr Salthouse's decision E E & T Limited assigned the trade mark application to Meta 104 Ltd ("Meta"). The parties agreed that Meta should be substituted as the respondent.  The appeal came on before Mr Justice Richards on 9 Feb 2023.  By his judgment of 3 March 2023, His Lordship dismissed Instagram's appeal (see Instagram LLC v Meta 404 Ltd [2023] EWHC 436 (Ch) (3 March 2023)),

The Opposition

Instagram opposed the application under s.5 (2) (b) and s.5 (3) of the Trade Marks Act 1994,

S.5 (2) (b) provides:

"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."

The earlier marks upon which Instagram relied were 

• the word INSTAGRAM which was registered as a UK trade mark for goods and services in classes 9, 25, 35, 38, 41, 42 and 45 with effect from 25 Aug 2015 under registration number UK 00003123325, and 
• the word GRAM which had been registered as an EU trade mark for goods and services in classes 16, 18, 21, 24, 25, 35, 41, 42, 43 and 45 under registration number EU17642729 with effect from 28 Dec 2019.

S.5 (3) provides:

"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."

S.(3A) further provides that s.5 (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.

For its opposition under s.5 (3), Instagram relied on the same earlier marks as for s.5 (2) (b).

Mr Salthouse's Decision

The hearing officer compared the word SOUNDGRAM with the earlier marks and the services for which SOUNDGRAM was to be registered with the goods and services for which the earlier marks had been registered.  He concluded at para [39] of his decision:

"Taking all of my findings earlier in this decision above into account I conclude that despite being used on identical services, and even allowing for the concept of imperfect recollection, the differences in the marks of the two parties is so great that there is no likelihood of consumers being confused, directly or indirectly, into believing that the services applied for and provided by the applicant are those of the opponent or provided by an undertaking linked to it. The opposition under Section 5(2) (b) therefore fails in respect of all the services."

Turning to s.5 (3), Mr Salthouse said at para [45]:

"Earlier in this decision I determined that the opponent’s mark INSTAGRAM was similar to the mark in suit to a low degree. The only point of similarity is the element GRAM at the end of each mark which is of low distinctiveness as all it conveys is that the mark involves a messaging service such as a Telegram or kissogram etc. 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. The ground of opposition under section 5(3) fails."

Grounds of Appeal

Mr Justice Richards listed the grounds of appeal at para [20] of his judgment:

"i) 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.
ii) 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.
iii) 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.
iv) 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.
v) Ground 5 – The Hearing Officer erred in finding that the Soundgram Mark would not even bring to mind the INSTAGRAM mark when considering s5(3) of the Act."

The Court's Approach

The judge noted that CPR 52.21 applied to the appeal.  He, therefore, intended to approach it as a review of the hearing officer's decision.  Instagram had not challenged his self-direction on the law. It objected only to the outcome of the multifactorial assessment that Mr Salthouse had applied.  His Lordship quoted the following passage from para [2] of Lord Justice Lewison's judgment in Volpi v Volpi [2022] EWCA Civ 464, [2022] WLR(D) 173, [2022] 4 WLR 48:

"The appeal is therefore an appeal on a pure question of fact. The approach of an appeal court to that kind of appeal is a well-trodden path. It is unnecessary to refer in detail to the many cases that have discussed it; but the following principles are well-settled:
i) An appeal court should not interfere with the trial judge's conclusions on primary facts unless it is satisfied that he was plainly wrong.
ii) The adverb "plainly" does not refer to the degree of confidence felt by the appeal court that it would not have reached the same conclusion as the trial judge. 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 that no reasonable judge could have reached.
iii) An appeal court is bound, unless there is compelling reason to the contrary, to assume that the trial judge has taken the whole of the evidence into his consideration. The mere fact that a judge does not mention a specific piece of evidence does not mean that he overlooked it.
iv) The validity of the findings of fact made by a trial judge is not aptly tested by considering whether the judgment presents a balanced account of the evidence. The trial judge must of course consider all the material evidence (although it need not all be discussed in his judgment). The weight which he gives to it is however pre-eminently a matter for him.
v) An appeal court can therefore set aside a judgment on the basis that the judge failed to give the evidence a balanced consideration only if the judge's conclusion was rationally insupportable.
vi) Reasons for judgment will always be capable of having been better expressed. An appeal court should not subject a judgment to narrow textual analysis. Nor should it be picked over or construed as though it was a piece of legislation or a contract."

Mr Justice Richards said that the above principles applied not just to the hearing officer's findings of fact, but also to his evaluative conclusions drawn from those facts.  He gave the degree of similarity between marks, the inherent distinctiveness of marks and the presence or absence of a "likelihood of confusion" as an example.  However, as Mr Salthouse had heard no oral evidence in this case, he recalled Lord Justice Robert Walker's conservation in Bessant and others v South Cone Incorporated  [2003] RPC 5, [2002] EWCA Civ 763 that an appellate court should show "real reluctance" but not the "highest degree of reluctance" to interfere with a hearing officer's conclusions on multi-factorial assessments,  As he was hearing an appeal from a specialist tribunal, he recalled Lady Hale's observation in para [30] of her speech in AH (Sudan) v Secretary of State for the Home Department [2008] INLR 100, [2008] AC 678, [2008] 1 AC 678, [2008] 4 All ER 190, [2008] Imm AR 289, [2007] 3 WLR 832, [2007] UKHL 49 "that an expert tribunal, charged with applying the law in their specialist field, has probably got it right."

Ground 1

Instagram submitted that the hearing officer  erred "in principle" in failing to recognize:

"i) The at least average inherent distinctiveness of the GRAM mark; and
ii) that the GRAM mark had through use acquired an enhanced distinctive character in relation to the telecommunications services arising in this appeal."

The learned judge rejected that contention.  He said at [41]:

"In my judgment, the Hearing Officer was not bound to conclude that such a material proportion of the relevant section of the public used the word "gram" as referring specifically to Instagram's products as to give the GRAM mark enhanced distinctiveness. He could reasonably have formed the view that the Dictionary Evidence and the Media Evidence was not sufficient to underpin such a conclusion. I am not satisfied that the Hearing Officer's conclusion was perverse and I dismiss the appeal on Ground 1."

Ground 2

Instagram accepted that the hearing officer had directed himself correctly that:

"the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements" 

but it contended that he had failed properly to apply that direction. It submitted that he did not consider what the "distinctive and dominant" elements of the respective marks were or if he did consider them, that he reached a perverse conclusion.

Part of that argument depended on the court's acceptance of Instagram's contentions under ground 1. The judge said that he did not need to consider those contentions again.  Instagram then criticized the comparison of the words SOUNDGRAM and INSTAGRAM.   His Lordship rejected that criticism for the reasons set out by Lord Justice Lewison in Volpi. Instagram also complained that it was "unbalanced" for the hearing officer to conclude that the suffix "-gram" was allusive to some form of messaging without making the countervailing point that "sound" is also allusive to telecommunications services. The judge rejected that criticism. Mr Salthouse did not need to carry out such a balancing exercise. He had to set out an overall evaluative conclusion on "similarity" that properly took into account, even if it did not expressly mention, all the evidence presented to him. The learned judge was not satisfied that the hearing officer failed in that regard.

Ground 3

Instagram challenged as an error in principle Mr Salthouse's finding at paras [16] and [17] of his decision that the average consumer would pay an above-average degree of attention when purchasing relevant goods and services.  In Mr Justice Richards's judgment, that ground was an attempt to re-argue the factual case on appeal. Instagram's arguments in that regard suggested that there were plausible grounds on which the hearing officer might have made a different decision but they did not satisfy the judge that the decision was "plainly wrong" or vitiated by any error of principle.

Ground 4

His Lordship said that ground 4 was an assertion that all or any of the errors on grounds 1 to 3 vitiated Mr Salthouse's conclusions on the likelihood of confusion. Since each of those grounds had failed, it followed that ground 4 must fail as well.

Ground 5

Instagram challenged the hearing officer's finding that SOUNDGRAM Mark would not even bring the INSTAGRAM mark to the mind of the average consumer.  Part of that argument depended on his evaluation of low similarity between the two marks.  His Lordship said that he had dealt with that argument under ground 2.  The appellant also submitted that the hearing officer had failed to take account of the renown of the INSTAGRAM mark or its medium to high degree of distinctiveness, that he failed to consider the issue through the eyes of the average consumer and that accordingly, his finding was perverse.  Not all that criticism was well-founded.   For instance,  the judge pointed out that the hearing officer had mentioned Instagram's reputation in his decision. He acknowledged that not everybody would reach the same conclusion as the hearing officer but that did not mean that the hearing officer's finding was perverse.  It was not surprising that another tribunal might have come to a different conclusion.  The questions in this appeal involve multifactorial evaluations and the learned judge was not satisfied that Mr Salthouse was wrong.

Conclusion

This judgment illustrates just how difficult it is for an appellant to persuade an appellate tribunal that the decision below was wrong where no error of law is alleged.  In this case, Instagram was represented by leading counsel instructed by well-known patent attorneys while Meta and E E & T were represented by one of its directors.  I have no doubt that Instagram's legal representatives did and said everything that could be said and done on their client's behalf.

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