Instagoods Pty Ltd (“Instagoods”) learned the hard way that there is a danger in using part of an eminently known trade mark in a new trade mark application. Instagoods applied for the trade mark “Instadate”. While the Trade Marks Office (TMO) published acceptance of Instadate on 15 February 2019, registration of the trade mark was promptly opposed by Instagram Pty Ltd (“Instagram”).
The basis for Instagram opposing the trade mark Instadate was, of course, the similarity of the “Insta” component of the mark compared to their own famous “Instagram” trade mark. Instagram argued that not only is the prefix “INSTA… commonly known as the shorthand for the Opponent and Instagram”[1], but that many trade marks that use the INSTA prefix, alongside INSTA itself, are owned by Instagram. This can be referred to as a de facto monopoly where an owner has many trade marks with a common recognisable element, albeit without a registration for that element per se.
That Instagram had an eminent reputation as a photo sharing app was accepted by both the Applicant and Delegate. Whether or not Instagram’s reputation was limited to this space was therefore the question. In particular, it was disputed whether Instagram had built such a reputation in “Instagram” and its associated trade marks that the reputation extended to the types of goods and services claimed by Instagoods, namely in “computer software for retail and retail goods”[2]. It was considered that Instagram was connected with “events that take place in the physical world”[3] through the INSTAMEET app, a less well-known app in the Instagram suite of trade marks. In other words, the TMO Delegate considered that Instagram had indeed built a reputation for services concerning retail and marketing, which were related to the goods and services claimed by Instagoods.
The Delegate further considered whether users would wrongly draw a connection between INSTAGRAM and INSTADATE with respect to the common element “INSTA” in both marks. The delegate considered that “insta” is now used often in connection with the INSTAGRAM app, noting that it is generally defined as “indicating instant or quickly produced”[4]. Instagoods raised an argument that “INSTA” only ever appears in isolation from INSTAGRAM in articles where INSTAGRAM is referenced elsewhere in the same article. Evidence was not produced that “INSTA” had been used in isolation from INSTAGRAM. While the Delegate acknowledged this, it was concluded that in relevant online contexts, use of “INSTA” can nonetheless be seen to have a relationship with INSTAGRAM.
The Delegate decided to uphold the opposition to registration of INSTADATE for the reason that confusion is likely to arise between the marks in dispute. The lesson to take away from this is to steer clear of integrating well-known phrases or terms in your trade mark application. If you are considering applying for a trade mark that uses a well-known term, please contact us for further advise.
For the full case report, see here.
[1] Instagram LLC v Instagoods Pty Ltd [2021] ATMO 53.
[2] Ibid
[3] Ibid
[4] Ibid
