Instagram LLC v Instagoods Pty Ltd

[2021] ATMO 53

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

ReOpposition by Instagram, LLC to registration of trade mark application 1955633 (classes 9 and 35) – INSTADATE – in the name of Instagoods Pty Ltd.

Delegate:                 Nicole Worth

Representation:       Opponent: Stephen Rebikoff of Counsel, instructed by Davies Collison Cave

Applicant: Ian Robertson SC and William Mellor of Counsel, instructed by WRP Legal & Advisory

Decision:                   2021 ATMO 53

Trade Marks Act 1995 (Cth) - Section 52 opposition - s 60 considered – confusion likely because of reputation of Opponent’s trade mark – registration refused

Background

1. This decision is pursuant to an opposition by Instagram LLC (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the trade mark detailed below, in the name of Instagoods Pty Ltd (‘Applicant’):

Trade Mark:             INSTADATE (‘Trade Mark’)

Application No.:         1955633

Filing Date:               14 September 2018

Goods/Services:        Class 9: Computer software for the provision of retail services in respect of goods that are only otherwise available for purchase in physical outlets and/or online outlets through computers, computer networks and the internet

Class 35: Retail services in respect of goods that are only otherwise available for purchase in physical outlets and/or online outlets through computers, computer networks and the internet

2. The application to register the Trade Mark was examined as required by s 31 of the Act and its acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks on 15 February 2019.

3. The Opponent filed a Notice of Intention to Oppose registration on 15 April 2019 and a Statement of Grounds and Particulars (‘SGP’) on 15 May 2019. The parties filed their evidence in accordance with reg 5.14 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’). Shortly after filing its evidence in reply, the Opponent filed a request to add a ground to the SGP. This was eventually allowed and the parties filed further evidence in respect of the additional ground. The evidence of the parties is discussed later in this decision.

4. Thereafter the parties requested a hearing. A delegate of the Registrar of Trade Marks heard the matter, by video conference, on 19 March 2021. Stephen Rebikoff of counsel, instructed by Davies Collison Cave, prepared written submissions and spoke at the hearing on the Opponent’s behalf. Ian Robertson SC and William Mellor of counsel, instructed by WRP Legal & Advisory, prepared written submissions on the Applicant’s behalf, with Mr. Robertson making verbal submissions at the hearing.

5. The delegate who initially heard the matter no longer works within the Hearings and Oppositions section of IP Australia. For that reason the opposition has been handed to me to decide, in my capacity as a delegate of the Registrar of Trade Marks. I have read the submissions of the parties and viewed the recording of the hearing, and have examined all of the evidence on file. What follows is my decision, with reasons, based upon the submissions, the recording and the evidence.

Grounds, Onus and Relevant Date

6. The grounds of opposition particularised in the SGP are those under ss 60, 42(b) and 59 of the Act.[1] The ground under s 59 was added later by amendment. However, in light of the evidence filed by the Applicant in answer to that ground of opposition, it was not pursued at the hearing. The Opponent bears the onus of establishing a ground of opposition[2] and the standard of proof is the ordinary civil standard of the balance of probabilities.[3] Should it succeed on one of its grounds it is not necessary that I consider any remaining grounds. Nevertheless the remaining grounds, or any grounds under the Act, are available to the Opponent in the event of an appeal.

[1] A further ground was specified in the SGP, being ‘Registration of the Trade Mark ought to be refused in the exercise of the Registrar’s discretion, by reason of the conduct of the Applicant and/or the nature of the Trade mark and/or of its use and/or on such other grounds as the Registrar or the court, on appeal may see fit to allow’. I have not given this ground any consideration. Under s 52(4) of the Act the registration of a Trade Mark may be opposed on any of the grounds specified in the Act and on no other grounds. The further ground specified in the SGP is not a ground under the Act and, in my estimation, is not clearly the equivalent of any ground under the Act.

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[3] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

7. The relevant date at which the rights of the parties are determined is the filing date of the application,[4] which is usually, although not always, the priority date. Here the filing date and the priority date are the same, being 14 September 2018.

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

8. As will become clear I have found it necessary to discuss only the ground of opposition under s 60.

Evidence

9. The evidence filed in this matter comprises declarations by the following persons:

Evidence in support

Adam Matthew Sears, attorney at Davies Collison Cave Pty Ltd, with exhibits AMS-1 to AMS-14, dated 16 September 2019 (‘Sears’).

Evidence in answer

Garry Simon Winter, of WRP Legal & Advisory and legal representative of the Applicant, with exhibits IG-1 to IG-13, dated 3 December 2019 (‘Winter 1’).

Evidence in reply

Cheryl Hrvoj, attorney at Davies Collison Cave Pty Ltd, with exhibits CXH-1 to CXH-16, dated 13 February 2020 (‘Hrvoj’).

Evidence in support of s 59 ground

Cheryl Hrvoj with exhibits CXH-17 to CXH-22, dated 22 September 2020.

Evidence in answer to s 59 ground

Garry Simon Winter with exhibits GSW-1 to GSW-5, dated 21 October 2020 (‘Winter 2’).

1. The following statements from Sears give a summary of the Opponent’s business:

   1. The Opponent is the owner of Instagram, the world-famous photo/video sharing and editing service, software application and social network…

   7. Since its inception in 2010, Instagram has rapidly gained popularity globally and in Australia. Hundreds of millions of people worldwide use Instagram. As of June 2018, there are 1 billion monthly active accounts on Instagram worldwide, more than 500 million accounts of which are active on Instagram every single day.

   9. Instagram is not only a tool for individuals, but also for business. Instagram offers companies the opportunity to start a free business account to promote their brand and products.

   10. Instagram has more than 2 million monthly advertisers and more than 25 million business profiles….

   14. Since 2010, Instagram has been very popular in Australia. As at January 2016, Instagram was the second fastest growing social network in Australia…

   15. According to NapoleonCat, a Software as a Service social media customer services and analytics tool, at September 2018, there were 9,440,000 Instagram users in Australia…

   21. The Opponent is the registered owner and applicant in Australia of numerous trade marks, including INSTAGRAM, INSTA and trade marks that commence with the prefix INSTA- which pre-date the filing date of the Opposed Mark.

   23. INSTA is commonly known as the shorthand for the Opponent and Instagram…

2. Hrvoj elaborates further:

   7. On 15 December 2019, I accessed the Collins Dictionary online and noted that the dictionary also defines INSTA as:

   (ˈinstǝ)

   ADJECTIVE

   slang

   of or relating to photo-sharing application Instagram

   Insta friends

   14. In November 2016, the Opponent launched the INSTAGRAM SHOPPING service which allows businesses to tag a product featured in their INSTAGRAM posts and stories. Users can then view the name and price of that product when they tap on the product featured in the post or story. Users are also able to build shopping lists through the INSTAGRAM app by tapping on a tag and saving it.

   18. INSTAGRAM SHOPPING was launched in Australia in March 2018.

   25. In 2011, the Opponent launched INSTAMEET. INSTAMEET facilitates the physical meeting of users of the Opponent’s INSTAGRAM app. Users search the hashtag #instameet on the INSTAGRAM app to find the corresponding tag for their city, e.g. #instameetmelbourne. They can then check out posts related to that city’s INSTAMEET meetup on INSTAGRAM to find out the details of an INSTAMEET meetup already organised in that city or organise their own INSTAMEET meetup. At an INSTAMEET meetup, users join up with other users to get inspired, make new friends and take photos together.

3. In respect of the Applicant, Winter 1 states:

   7. The Application is necessary to protect the Applicant’s ‘instadate’ brand which carries on business providing a web and mobile dating application that is intrinsically coupled with a physical space (Applicant’s Platform).

   8. The Applicant’s Platform enables individuals who physically attend specific locations prescribed by the Applicant (Meeting Place) to indicate their level of attraction of other that are also physically present at the Meeting Place, through the Applicant’s Platform (Primary Purpose).

   12. In the course of providing users with access to the Applicant’s Platform, certain retail goods and services will be provided to users in a manner ancillary to the Primary Purpose (Ancillary Services).

   13. It is through the provision of the Ancillary Services that gives rise to the need for the Application; to protect the Applicant’s intellectual property rights by registering the Applicant’s Mark as a trade mark in Australia as the Ancillary Services are expected to substantially supplement the revenues generated through the Applicant’s Platform, and will assist in developing strong public recognition around the ‘Instadate’ brand.

4. This is explained further in Winter 2 and accompanying exhibits (which include various promotional proposals of the business model). In summary the Applicant intends to operate a number of physical retail spaces, being Instagoods stores, at which users of the Instadate app will shop and ‘hang out’. GSW-1 of Winter 2 is a promotional proposal for Instagoods from which the following statements are taken and which shed light on the intended stores:

   INSTAGOODS. Bringing online retail to the physical world.

   INSTAGOODS | THE PROBLEM. New age popular online retail brands have no real physical presence & are only available online…

   INSTAGOODS | THE SOLUTION. Brining online retails brands to the physical world…

   INSTAGOODS IN-STORE EXPERIENCE. Your video content & live feeds on our store front. Highly animated LED store windows. The ultimate branding & engagement platform.

   INSTAGOODS IN-STORE EXPERIENCE. Instagoods will not only be seen as a place to purchase your favourite online goods, but a place to hang. Visually beautiful retail environment. Stylish well priced in-trend fashion. Popular beauty brands. Hand out area. Photo opportunities. Music. Wifi. Multiple payment systems.

   Imagine a real world where you could touch & feel your online likes & loves.

5. GSW-2 of Winter 2, being promotional material for the Instadate app, makes the following statements on various pages which give some insight into the nature of the app:

   LIFE IS FOR shopping & hooking up.

   Where everybody belongs. Labels don’t exist. & the instagoods users come together.

   Imagine your favourite retailer & bumble [an online dating application] hook up.

   INSTADATE IS WHERE THE INSTAGOODS CUSTOMERS play music when in store, browse & shop, get great offers, connect, hang, date.

   The app is designed around navigation points of SHOP [within which are various categories of goods], INSTORE [containing the categories ‘events’, ‘offers’ and ‘scan & go’], DATE [containing the categories ‘date’, ‘bff’ and ‘bizz’].

   INSTADATE. Touch & feel your likes and loves.

6. In respect of the word ‘Insta’ Winter 1 makes a number of submissions disputing that the Opponent has a reputation in the word on its own, without reference also to the full name Instagram. Winter 1 includes lists of various trade marks upon the Australian Register of Trade Marks (Register) owned or applied for by entities other than the Opponent incorporating the word or prefix INSTA, as well as the following definition from the Collins English Dictionary:

   combining form.

   indicating instant or quickly produced.

   insta-thriller. [5]

   [5] Exhibit IG-13 to Winter 1.

Section 60

1. Section 60 is reproduced below:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

2. The trade mark relied upon by the Opponent in respect of this ground is INSTAGRAM.

3. To establish the ground of opposition the Opponent must demonstrate its trade mark had acquired a reputation in Australia such that by the priority date, 14 September 2018, the use of the Trade Mark would be likely to deceive or cause confusion.[6]

   [6] The notion of ‘deceive’ does not necessarily imply intent to do so, per Lord Denning in Parker-Knoll Limited v Knoll International Limited [1962] RPC 265, 174.

4. Reputation in this context refers to the recognition of the Opponent’s trade mark by the public generally,[7] although the size and nature of the relevant market must be taken into account.[8] I note that confusion or deception may be likely where very little nexus exists between the goods and/or services in question depending on the strength of reputation and degree of similarity between the parties’ trade marks,[9] and confusion cannot arise solely from reputation but must always involve some degree of similarity between trade marks, whether it be called deceptive similarity or something less.[10]

   [7] McCormick & Company Inc v McCormick [2000] FCA 1335, [81].

   [8] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91].

   [9] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40].

   [10] Rogers Seller & Myhill v Reece Pty Ltd [2010] ATMO 5, [39].

5. I am satisfied that by the priority date the Opponent’s trade mark INSTAGRAM had a reputation of the kind contemplated by s 60. The Applicant conceded as much in verbal submissions, albeit only in relation to a photo sharing app. I need not discuss in detail the evidence leading me to this conclusion, I merely mention the more than 1 billion global Instagram accounts, the more than 9 million Australian users, the plethora of Australian publications referring to Instagram[11] and my own knowledge as an individual living in Australia.

   [11] Exhibits AMS-9 and AMS-13 to Sears, comprising almost 450 pages of references in various publications.

6. The contention lies in the extent, if any, of the reputation of INSTAGRAM beyond a photo sharing app, and the extent, if any, to which the prefix INSTA in INSTADATE might be taken to indicate an association with the Opponent.

7. Dealing with the first contention, I am satisfied that the reputation of INSTAGRAM extends beyond an app which allows users to share photos and videos. In the first instance, the word INSTAGRAM is both distinctive and has a level of fame that means its use in a wide range of contexts would bring the Opponent to the mind of most consumers in Australia. Secondly, it is a valuable marketing and sales tool for businesses and individuals: I refer to the previously mentioned 25 million business profiles as well as the evidence of Hrvoj which discusses the ‘Instagram shopping’ feature (launched in Australia in March 2018).[12] That feature allows for items in images to be tagged with information about the product and its price, and enables users to build shopping lists, then go to the relevant third party website to complete their purchases. Thirdly, in 2011 the Opponent launched INSTAMEET which enables users of the Instagram app to arrange to meet in person. The focus of an Instameet appears to be primarily as a way for individual users to connect and take photos together in the physical world.[13] However the feature appears to be becoming increasingly commercial, per the following comments from an article entitled What is an Instameet and how can it work for your brand?:

   An instameet is literally an Instagram Meeting. Instameets started out being organised by devoted Instagramers so they could meet in-person, explore a city and of course take photos. But now the social phenomenon is being picked up by brands as a way to connect with their customers, generate social buzz and reach new audiences…

   An Instameet is an opportunity to have a ‘real-life’ connection with your customers and with Influencers who care about your brand. It is an opportunity to share your brand’s story through a medium that resonates with Social Influencers.[14]

It is not clear from which country the article originates, however it is at least an indication of the way in which the app may be used by Australian businesses to connect with their market in the physical world.

[12] See paragraphs [10]-[11] of this decision.

[13] Exhibit CXH-11 to Hrvoj contains two Australian articles discussing what an Instameet is, both of which describe it as an opportunity to meet fellow photographers/‘Instagrammers’ and take photographs.

[14] Exhibit CXH-11 to Hrvoj.

1. Whilst I do not consider that the INSTAMEET name itself has a reputation of the kind contemplated by s 60, the ability to organise social events via Instagram works to associate INSTAGRAM with such events that take place in the physical world.

2. As such, I consider the reputation of INSTAGRAM extends at least as far as marketing and retail services, as well as to events connecting users of the app in a face to face environment. Such activities also serve to educate the public that the Opponent does take part in brand extension.

3. I note further that the Applicant’s goods and services, being essentially computer software for retail and retail services, are quite close to those for which reputation is shown (although similarity of goods and services is not necessary to prove s 60). Despite many of the Applicant’s submissions being concerned with the actual intended use to be made of the INSTADATE trade mark, the consideration of the likelihood of confusion is concerned with the notional use to which it may be put.[15]

   [15] Registrar of Trade Marks v Woolworths 1999 FCA 1020, [50].

4. As to whether the prefix INSTA in INSTADATE might be taken to indicate the Opponent, I observe that ‘insta’ has a meaning in and of itself, per the definition given by the Applicant in paragraph 15 of this decision: ‘indicating instant or quickly produced’. In many contexts ‘insta’ will retain that meaning. Nonetheless, and increasingly over time, ‘insta’ has come to be used as a reference to the Opponent’s app and activities or people associated with it. Hrvoj provides a number of references defining ‘Insta’ as relating to Instagram.[16] Exhibits AMS-9 and AMS-13 of Sears comprise more than 400 pages of examples of use of ‘insta’ in this way in Australian media. They include examples of ‘Insta’ being used as a direct reference to the Opponent’s app:

   ‘I post to Insta’; ‘Insta moments’; ‘Insta-ready’; ‘shop-insta’; ‘Insta fix’; ‘Insta-friendly displays’; ‘make it big on Insta’; ‘Insta-worthy’; ‘a pretty place to Insta everything’; ‘Insta culture’; ‘Insta foodies’; ‘Insta generation’.

as well as examples of ‘Insta’ being used as a pun to refer to both the concept of ‘instant’ and the way in which Instagram can effect change or results very rapidly:

‘Insta success’; ‘Insta stars’; ‘Insta-famous’; ‘Insta-gratification’.

[16] Including the Collins Dictionary, the Full Form Book online, and Hrvoj [6]-[12] and exhibits CXH-1 to CXH-3.

1. The Applicant contends that the articles show ‘Insta’ is always used in conjunction with ‘Instagram’. It is true that all of the articles use the full name Instagram as well as the prefix ‘Insta’ (although I note that many include ‘Insta’ in the heading and it is only in the body of the article that the full name is used). In any event I am not persuaded that this proves ‘Insta’ has no association, of itself, with the Opponent. Rather, the articles are a reasonable basis upon which to infer that, in contexts likely to be associated with the Opponent’s app, such as travel destinations, shopping, photo-worthy backdrops, celebrity or fame, the prefix ‘Insta’ will be taken as a reference to the Opponent. I refer also to ‘the well-known trade practice of traders in adopting a certain word as a trade mark and constructing other trade marks for distinguishing characteristics of their goods by using such word as a basis and adding thereto’.[17]

   [17] Kodak (Australasia ) Pty Ltd’s Application, (1936) 6 AOJP 1724.

2. The Applicant also directed me to a large number of trade marks upon the Register, either registered or seeking registration and including in classes 9 and 35, that contain the prefix INSTA (and one that comprises the word INSTA solus). I note firstly the comments of Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks:[18]

   The second matter mentioned by Ms Baird is that Ocean Spray adduced evidence of other registered marks that contain, or consist wholly of, the word "classic". That evidence should be disregarded, for the reasons expressed by Jacob J in British Sugar at 305:

   "Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word `Treat'. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence."

   I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.

   [18] [2000] FCA 177, [35].

3. I consider that here too it would be an unwarranted distraction to investigate and comment upon them. There has been no evidence filed to show whether these trade marks are actually being used in the Australian market place. I also mention that (as noted above) the meaning of the INSTA prefix in various contexts has changed over time, such that previously it may not have signified what it now does.

4. The Trade Mark, INSTADATE, is concerned with goods and services for which the INSTAGRAM trade mark has a reputation. Given it is used in the contexts of software for retail and retail services, I consider it likely that the INSTA prefix in INSTADATE will, at the very least, cause a significant number of consumers to wonder whether the Applicant’s goods and services come from the Opponent or are sponsored or licensed by the Opponent. Whilst the suffix DATE indicates an intended social connection between users, it remains the case that the specified goods and services say nothing of dating or social services. In such a scenario the word DATE is somewhat ambiguous. Even were it not and DATE was definitively taken to indicate retail software and services somehow involving a dating element, I consider that this too would be taken to be an extension of the Opponent’s services given the alignment of dating and social media platforms.

5. I am therefore satisfied that the Opponent’s trade mark has a reputation and because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion. The ground of opposition under s 60 is therefore established.

Decision

1. Section 55 relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

2. I have found the Opponent has established the ground of opposition under s 60. As a delegate of the Registrar, I accordingly refuse to register the Trade Mark.

Costs

1. The Opponent has sought an award of costs in its favour. The Applicant has also submitted:

   As the Opponent has abandoned the ground of opposition under s 59 of the Act, the Applicant seeks an order for the costs of and incidental to that amendment to the date of the Opponent’s written submissions, in any event.

2. I do not consider it reasonable to make the award the Applicant seeks. The addition of the ground under s 59 was allowed by a delegate of the Registrar on the basis that it related to information of which the Opponent could not reasonably have been aware at the time the SGP was filed. A corollary of that it is that it was then reasonable to open the Applicant’s intention to investigation. Whether or not an Opponent elects to proceed with grounds properly included in an opposition does not inform an award of costs.

3. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under s 221 in line with the amounts in Schedule 8 of the Regulations.

Nicole Worth
Hearing Officer
Delegate of the Registrar of Trade Marks
16 June 2021