The Office for Harmonization in the Internal Market (“OHIM”) recently declared the invalidity of the registered Community trademark “instaweather”, granting the application for a declaration of invalidity filed by Instagram LLC, the owner of the well-known trademark. On the same day, the Office also declared the invalidity of the trademarks “instaplace”, “instakids”, “travelgram” and “instaweather pro”, which had been registered by the same person, again granting applications filed by Instagram on the basis of considerations similar to those expressed in the decision here under review (no. 9413 C of 7 October 2015).
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The “instaweather” trademark was filed in January 2013 for products in Class 9 (software), and was used in particular for an application that allowed users to include weather information as tags on pictures, and then share those images on Instagram.
The cancellation proceedings commenced by Instagram was based on Article 53(1)(a) of EC Regulation no. 207/2009 on the Community Trademark (“CTMR”). Under this provision, a registered Community Trademark shall be declared invalid upon application by the owner of an earlier trademark, where the requirements of Article 8(1) CTMR or Article 8(5) CTMR are met, i.e. in substance:
– Art. 8(1): a) the trademark is identical with the earlier trade mark and the goods or services covered by it are identical with the goods or services covered by the earlier trademark; or b) the trademark is identical with or similar to the earlier trademark, the goods or services covered by it are identical with or similar to the goods or services covered by the earlier trademark and, because of such identity or similarity, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected;
– Art. 8(5): i) the trademark is identical with, or similar to, the earlier trademark, although registered for non-similar goods or services; ii) the earlier trademark has a reputation in the relevant territory; and iii) the use without due cause of the trademark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.
In the decision under review, the Office did not actually examine whether the former hypothesis was integrated, but went directly to verify the (cumulative) requirements posed by Art. 8(5) CTMR. This is peculiar, as Art. 8(5) refers to trademarks registered for products that are not similar, whereas in this case the products concerned were similar, as stated in the same decision.
The Office then declared, first, that the “instagram” and “instaweather” trademarks are similar when compared from a visual, aural and conceptual point of view.
Second, the Office established that the “instagram” trademark already enjoyed a great reputation at the date on which the application for the “instaweather” trademark was filed. The Office pointed out that the threshold of reputation required by law “is only reached when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. (…) In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trademark, the intensity, geographical extent and duration of its use and the size of the investment made by the undertaking in promoting it”. The Office stated that Instagram had provided “very voluminous evidence” proving the reputation of its trademark, demonstrating in particular that, although used only as from October 2010 (hence, for a short time before the filing of the contested trademark), it had been the subject of very intensive use throughout the European Union: its app had millions of users and was considered one of the leaders in the field of social networks together with Facebook, Twitter and Pinterest.
The OHIM then went on to verify the existence of the third requirement set by Art. 8(5) CTMR, i.e. whether the use without due cause of the “instaweather” trademark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the “instagram” trademark. In this respect, the Office stated first of all that, given the extreme closeness of the goods covered by the trademarks, the high degree of reputation of the “instagram” trademark and the coinciding element “insta” at the beginning of both trademarks, consumers are likely to establish a mental “link” between the “instaweather” and “instagram” trademarks. The trademark “instaweather” is also likely to take advantage of the reputation of the “instagram” trademark and of its image of a dynamic and successful social network, thus achieving higher sales of the products covered by it exclusively through the connection to the “instagram” trademark; hence the conclusion that the contested trademark would take unfair advantage of the reputation of the claimant’s trademark. The Office also rejected the defence put forward by the proprietor of the “instaweather” trademark that he had “due cause” for using it: although it’s true that the original Instagram policy expressly allowed, to programs integrated with Instagram, the use of the individual terms “insta” or “gram” if disjointed (what was later expressly forbidden by subsequent updates to that policy), that policy did not appear to be in force at the time the application for the “instaweather” trademark was filed, and in any case it couldn’t justify the use of the earlier trademark in order to take advantage of its reputation.
In light of all of the above, the OHIM then declared the invalidity of the contested trademark, considering it unnecessary to examine the remaining grounds on which Instagram’s application was based.