India: Trademark Battle Over The Word ‘Gram'- Instagram vs Microsoft Corporation LLC

Last Updated: 29 November 2017
Article by Shrabani Rout

Introduction

Created by Kevin Systrom and Mike Krieger in 2010, Instagram is a social media platform for sharing photos and videos which has become quite popular in the recent years with teenagers and adults alike. Instagram lets registered users upload photos or videos to the platform.

Due to the enormous success it garnered in such a short period of time, Instagram is very aware of its intellectual property rights as can be seen from their newly updated guidelines for usage wherein they have banned third party apps from using variations of its name in the name of their apps. Third parties are also banned from using the Instagram logo or name in their app icons. After social media giant Facebook acquired Instagram in the year 2012, it has gone after apps like "SONSTAGRAM", "FAMILYGRAM" and "INSTANEWS" to name a few.

However, recently Instagram took upon another American tech titan, Microsoft Corporation who wanted to register the mark "ACTIONGRAM" in the class of goods and services that covers "Computer software for virtual reality visualization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files; operating system software; computer software, namely, software for setting up, operating, configuring, and controlling wearable hardware and wearable computer peripherals" with the US Patent and Trademark Office(USPTO).

According to Instagram's Notice of Opposition with the US Patent and Trademark Office (USPTO) the company is convinced that it "will be damaged by the registration of the Actiongram mark," as Microsoft's "goods claimed in its application are related to the goods and services offered by Instagram in connection with its Instagram trademarks."

Likelihood of confusion?

The pertinent question that arises is whether Actiongram is confusingly similar to Instagram or not. The answer depends on several factors, including the goods and services, the consumers' perception, the marketplace of the marks, etc.

Microsoft has proposed to use the mark "Actiongram" for its holographic story telling medium whereby people can juxtapose the holographic content in their everyday life and thereby create a Mixed Reality Capture (MRC) video. At the outset, it is quite clear that the proposed use of the mark is quite different from Instagram's purpose i.e sharing pictures with the world at large through one's account on Instagram.

Further, it is also very important to note that Microsoft is continuously advertising 'Actiongram' as its own product thereby minimizing the possibility of confusion among consumers. Furthermore, the difference in classes of users, to which the two social media platform cater to, are of utmost importance because while Instagram is for individuals that like sharing pictures, Actiongram will appeal to the creative user who like to use their imagination to create a new video. The sophistication of the users has to be taken into account in order to ascertain whether Actiongram is confusingly or deceptively similar to Instagram.

#Instaopposition-Legal standpoint

Can INSTAGRAM really ban other companies from using the generic terms 'insta' and 'gram' with respect to their apps? In September 2016, Instagram has filed an application with the OHIM in Europe to register the word "gram". If such a registration was granted, any company using the word gram would be held to infringe Instagram's rights.

It is a settled principle in trade mark law that one cannot claim monopoly over a 'prefix' or a 'suffix' it is necessary to assess the marks in question as a whole and if one mark appears to be deceptively similar to the other in any manner–visual or phonetic, a case for infringement of trade mark can be successfully made out.

Instagram wants to trademark a common prefix referring to something being quick/instantaneous and an equally common suffix used for all types of recordings/writings which is also the name of an international standard unit for weights and measures. If Instagram is given the trademark monopoly over the word 'gram', several other third party apps will have to bear the costs of rebranding themselves.

However it is also pertinent to mention that Instagram has been quite specific that they want the trademark for "Downloadable computer software for modifying and enabling transmission of images, audio-visual and video context; downloadable computer software for viewing and interacting with a feed of images, audio-visual and video content and associated text and data; computer software for social networking."

Instagram wants to limit the use of 'gram' in the software sense which when granted would not allow people to come up with software that have the word 'gram' in it.

Conclusion

On June 21, 2017 the Trial and Appellate Board of the United States Patent and Trademark Office passed an order settling the case between the two parties.

Microsoft agreed to Instagram's terms and amended the goods in class 9 from "Computer software for virtual reality visualization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files; operating system software; computer software, namely, software for setting up, operating, configuring, and controlling wearable hardware and wearable computer peripherals"

To

"Computer software for virtual reality visualization, manipulation, immersion and integration of holographic content for the purpose of making virtual reality audio/visual content that incorporates holograms or holographic content;operating system software;computer software,namely, software for setting up, operating, configuring anf controlling wearable hardware and wearable computer peripherals."

Subsequently, Instagram has now withdrawn its opposition.

Microsoft Corporation having enormous resources at its disposal could settle the case with Instagram while all other entities with their limited resources against Instagram's huge ones bite the dust.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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