Instagram, LLC v Meta 404 Limited

An appeal from a specialist tribunal is ordinarily a review, not a rehearing. Appellate intervention in primary facts and evaluative conclusions is justified only where the tribunal was plainly wrong, made an error of principle, or reached a conclusion no reasonable tribunal could reach. That restraint applies to multifactorial trade mark assessments, including similarity, distinctive character, the characteristics and attention of the average consumer, likelihood of confusion, and whether a later mark calls an earlier mark to mind. A tribunal need not discuss every piece of evidence or provide a balanced account listing every factor. It is sufficient that the decision, read as a whole, shows that the relevant matters were considered.

Instagram opposed registration of the word mark “Soundgram” for Class 38 services under sections 5(2)(b) and 5(3) of the Trade Marks Act 1994. The Hearing Officer rejected the opposition, finding low similarity between the marks, no likelihood of confusion, and no sufficient link between Soundgram and INSTAGRAM for the purposes of section 5(3). Instagram appealed against the Hearing Officer’s evaluative conclusions concerning the GRAM mark’s distinctiveness, similarity, the average consumer, likelihood of confusion and whether INSTAGRAM would be brought to mind.

The central issue was whether any challenged conclusion was plainly wrong, irrational or vitiated by an error of principle.

1. Appeal dismissed. The appeal was governed by CPR 52.21 and was approached as a review rather than a rehearing.
2. The principles in Volpi v Volpi applied not only to primary factual findings but also to evaluative conclusions drawn from largely uncontroversial facts. The appellate court should not interfere merely because it might have reached a different conclusion. The decision must be plainly wrong or rationally insupportable, and the judgment should be read as a whole rather than subjected to narrow textual analysis.
3. The Hearing Officer was entitled to consider uses of “gram” as a suffix, including its allusive association with messaging, when assessing inherent distinctiveness. His conclusion that GRAM had low inherent distinctiveness was not perverse. The evidence that “gram” could refer informally to Instagram did not compel a finding of enhanced distinctiveness through use, since it did not establish that a material proportion of the relevant public used the term in an origin-specific way.
4. The Hearing Officer was entitled to conclude that INSTAGRAM and Soundgram, and GRAM and Soundgram, were similar only to a low degree. He was not required to identify separately every dominant or distinctive element or to list all evidence pointing in both directions. The decision sufficiently explained why the common suffix did not determine the overall comparison.
5. The findings that the average consumer would pay above-average attention, that there was no likelihood of confusion under section 5(2)(b), and that Soundgram would not bring INSTAGRAM to mind under section 5(3) were evaluative conclusions. They were not plainly wrong or legally flawed. The existence of respectable alternative arguments, or a different conclusion in another opposition proceeding, did not justify appellate interference.
6. The Hearing Officer’s findings under section 5(2)(b) and section 5(3) therefore stood, and the appeal was dismissed in its entirety.

High Court (Chancery Division): dismissed Instagram’s appeal from the Hearing Officer’s decision of 25 January 2022 allowing registration of the Soundgram mark.