(Businesses should avoid adopting trade marks that contain elements that indicate well-known trade marks)
Instagram LLC v Instagoods Pty Ltd [2021] ATMO 53 (16 June 2021)
Instagram is often referred to as "Insta", and the power of consumer recognition of that reference has helped Instagram LLC succeed in opposing the registration of the INSTADATE trade mark in Australia. The decision serves as a reminder for businesses to be mindful of adopting prefixes or suffixes as part of their branding which could be perceived as indicating well-known trade marks.
Instagram, LLC ('Instagram') filed an opposition against an application to register the trade mark INSTADATE by Instagoods Pty Ltd ('Instagoods'), covering computer software for retail services and retail services.
The grounds of opposition
Two main grounds of opposition were pursued, namely:
- that as a result of Instagram's use and reputation in the INSTAGRAM trade mark in Australia as at the filing date of the opposed application, use of the INSTADATE trade mark would be likely to deceive or cause confusion (section 60 ground); and
- that use of the INSTADATE trade mark would be contrary to law (s 42(b) ground).
Section 60 - Reputation of INSTAGRAM in Australia
The Delegate found that Instagram had acquired the requisite level of reputation in the INSTAGRAM trade mark in Australia. In arriving at this finding, the Delegate referred to the more than 1 billion global Instagram accounts, the more than 9 million Australian users of the Instagram app, and the plethora of Australian publications referring to Instagram.
Other findings made by the Delegate regarding the INSTAGRAM mark include:
- The word INSTAGRAM is both distinctive and has a level of fame so that its use in a wide range of contexts would bring Instagram to the mind of most consumers in Australia.
- Instagram is a valuable marketing and sales tool for businesses and individuals, particularly with respect to the INSTAGRAM SHOPPING feature that connects Instagram users to the relevant third-party websites.
- In 2011, Instagram launched INSTAMEET which enables users of the Instagram app to arrange to meet in person.
Whilst the Delegate stated that INSTAMEET itself did not have the reputation of the kind contemplated by section 60, the organisation of social events via the Instagram app associates Instagram with such events in the physical world. As such, the reputation of INSTAGRAM extends at least as far as marketing and retail services, as well as to events connecting users of the Instagram app in a face to face environment, which are services closely related to the services covered by the opposed INSTADATE application.
Although the Delegate accepted that 'insta' did have a meaning 'indicating instant or quickly produced', she rejected Instagood's contention that Instagram had no reputation in the prefix 'insta' without reference to the full word 'Instagram', finding instead that 'insta' has come to be used as a reference to INSTAGRAM and activities or people associated with it. The Delegate was persuaded by the numerous examples of use of 'insta' in Australian media, e.g.: 'Insta' being used as a direct reference to INSTAGRAM, 'Insta moments'; 'shop-insta'; 'Insta-worthy' etc.
The Delegate considered it likely that the INSTA prefix in INSTADATE will, at the very least, cause confusion amongst consumers as to the trade source of the goods and services provided under the mark. This is despite the suffix DATE indicating a social connection between users, since the specified goods/services do not refer to dating or social services.
The ground of opposition under section 60 was therefore established. Accordingly, there was no need to consider the second ground of opposition and the application to register INSTADATE was refused.
An appeal against the decision is currently pending.
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