Companies should steer clear of adopting trademarks that include components associated with already established trademarks.
Instagram LLC v Instagoods Pty Ltd 2021 ATMO 53 (16 June 2021):
Instagram LLC won their opposition to the INSTADATE trademark registration due to consumer recognition of its nickname, “Insta”. Businesses should be aware that attaching prefixes or suffixes to their branding may lead them into conflict with well-known marks.
Instagram contested Instagoods’ attempt to register the trademark INSTADATE for software and retail services.
Two main arguments were presented, namely:
Section 60 - INSTAGRAM’s Reputation in Australia
The Delegate determined that the INSTAGRAM mark had established a recognisable status in Australia. Supporting this judgement were 1 billion Instagram accounts worldwide, 9 million Australian app users and ample references to Instagram from local sources.
The Delegate’s other findings on the INSTAGRAM mark were:
Most Australians are familiar with INSTAGRAM, due to its distinctiveness and notoriety.
Instagram is a powerful tool for marketers and individuals, particularly with the INSTAGRAM SHOPPING function which links users to other sites.
In 2011, Instagram introduced INSTAMEET to let users of the app meet in person.
The Delegate declared that the INSTAMEET brand did not have a standing meeting section 60’s criteria. Nevertheless, by coordinating events through Instagram app, it linked this platform to its physical world equivalent; thus extending INSTAGRAM’s reputation into retail and marketing services as well as fostering user interactions offline - all closely related to those featured in the opposed INSTADATE application.
While the Delegate agreed that ‘insta’ could refer to something done quickly, they denied Instagood’s claim that Instagram had no fame when just using its prefix. Evidence from various Australian media sources such as “Insta being used as a direct reference to INSTAGRAM” swayed their opinion.
The Delegate suggested that, at the least, consumers could be confused by INSTA in INSTADATE regarding where these goods/services originate from. This holds true even with DATE referring to social networking; since none of the services relate to dating or a similar concept.
Section 60’s opposition was thus established; therefore, it wasn’t necessary to assess the second ground and INSTADATE registration application was denied.
A challenge to the decision is in progress.