Stitch Editing Limited v TikTok Information Technologies UK Limited
[2023] EWHC 1167 (Ch)
Instagram, LLC v Meta 404 Limited
3 March 2023
[2023] EWHC 436 (Ch)
High Court
Instagram didn't like that another company registered a trademark similar to their own ("Soundgram"). They appealed, but the judge said the original decision was fair, even if another judge might have decided differently. The judge said that overturning the original decision requires a very strong argument, which Instagram didn't provide.
Key Facts
- •Instagram appealed a UK Intellectual Property Office decision registering the trademark "Soundgram" in Class 38.
- •The applicant, EE&T Limited, assigned the mark to Meta 404 Limited, who became the respondent.
- •Instagram's opposition was based on its UK registered trademark "INSTAGRAM" and EU trademark "GRAM", relying on sections 5(2)(b) and 5(3) of the Trade Marks Act 1994.
- •The Hearing Officer found low similarity between the marks and no likelihood of confusion.
- •Instagram appealed on grounds of flawed assessment of distinctiveness, similarity, average consumer characteristics, and likelihood of confusion.
Legal Principles
Relative grounds for refusal of registration; likelihood of confusion; unfair advantage of reputation.
Trade Marks Act 1994, sections 5(2)(b) and 5(3)
Appellate courts should not lightly interfere with factual findings of first-instance tribunals unless plainly wrong.
Volpi v Volpi [2022] EWCA Civ 464
In multi-factorial assessments, appellate courts should show "real reluctance" to interfere with a hearing officer's conclusions.
Reef Trademark case [2002] EWCA Civ 763
Appellate courts should not reverse a judge's decision unless he has erred in principle (particularly in cases involving the application of a not altogether precise legal standard).
Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 577
Outcomes
Appeal dismissed.
The Hearing Officer's conclusions, while possibly open to different interpretations, were not "plainly wrong" or based on errors of principle. The court found Instagram failed to meet the high burden of showing the Hearing Officer's conclusions were perverse.
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