DECISION

of the Fifth Board of Appeal

of 26 July 2016

In Case R 136/2016-5

Byss Mobile Spolka Jawna Marcin Krakowiak, Tomasz Sarnowski, Grzegorz Moździerz
Bohaterów Warszawy 21 70-372 Szczecin Poland	EUTM Proprietor / Appellant

represented by Marcin Walkowiak, Buk 3B, 72-003, Dobra, Poland

v

Instagram, LLC
1601 Willow Rd. Menlo Park, California 94025 United States of America	Cancellation Applicant / Respondent

represented by CARLOS POLO & ASOCIADOS, Profesor Waksman, 10, 28036 Madrid, SPAIN

APPEAL relating to Cancellation Proceedings No 9 400 C (European Union trade mark registration No 11 482 106)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson and Rapporteur), A. Pohlmann (Member) and V. Melgar (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 11 January 2013, Byss Mobile Spolka Jawna Marcin Krakowiak, Tomasz Sarnowski, Grzegorz Moździerz (‘the EUTM proprietor’) sought to register the word declared the invalidity of

INSTAPLACE

for the following list of goods:

Class 9 ‒ Computer software [programmes]; software and applications for mobile devices; computer interface software; games software.

2. The application was published on 21 January 2013 and the mark was registered on 30 April 2013.

3. On 30 May 2014, Instagram, LLC (‘the cancellation applicant’) filed a request for a declaration of invalidity of the registered mark for all the above goods.

4. The grounds of the request for declared the invalidity of were those laid down in Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) and 8(5) EUTMR.

5. The invalidity request was based on the earlier International Registration No 1 129 314, designating, inter alia, the European Union, for the mark

INSTAGRAM

filed and registered on 15 March 2012 for the following goods and services:

Class 9 ‒ Downloadable computer software for modifying the appearance and enabling transmission of photographs;

Class 42 ‒ Providing a web site that gives users the ability to upload photographs; technical support services, namely, providing help desk services in the field of computer software, namely, providing users with instructions and advice on the use of downloadable computer software, provided online and via e-mail; computer services, namely, providing an interactive website featuring technology that allows users to manage their online photograph and social networking accounts.

6. The cancellation applicant claimed that the earlier mark enjoyed reputation in the European Union and submitted the following evidence thereof:

Exhibit A

• A.1: A printout, dated 10 March 2014, from Wikipedia, The Free Encyclopedia on ‘Instagram’.

According to the article, ‘INSTAGRAM’ is an online photo-sharing, video-sharing and social networking service that enables its users to take pictures and videos, apply digital filters to them, and share them on a variety of social networking services, such as Facebook, Twitter, Tumblr and Flickr. A distinctive feature is that it confines photos to a square shape, similar to Kodak Instamatic and Polaroid images, in contrast to the 16:9 aspect ratio now typically used by mobile device cameras. Users are also able to record and share short videos lasting for up to 15 seconds.

• Instagram was created by Kevin Systrom and Mike Krieger, and launched in October 2010. The service rapidly gained popularity, with over 100 million active users as of April 2012. Instagram is distributed through the Apple App Store, Google Play, and Windows Phone Store. Support was originally available for only the iPhone, iPad and iPod Touch; in April 2012, support was added for Android camera phones. Third-party Instagram apps are available for Blackberry 10 and Nokia-Symbian Devices. On October 22, 2013, during the Nokia World at Abu Dhabi, UAE, Kevin Systrom confirmed that the official Instagram app for Windows Phone would be available in the coming weeks. On November 21, 2013, the official Instagram Beta for Windows Phone was released to Windows Phone 8 to allow Windows Phone user to get faster access to Instagram services although the app is still under development with lack of video recording and capture image through app. The service was acquired by Facebook in April 2012 for approximately USD 1 billion in cash and stock. In 2013, Instagram grew by 23%, while Facebook, as the mother company, only grew by 3%;

• A.2: Printouts, dated 7 April 2014, from ‘Alexa’, the web information company, which provides, inter alia, global and country traffic ranks showing how popular a site is relative to other sites. The website www.instagram.com ranks globally as the 37th most popular website with the highest combination of visitors and pages seen. For example, it ranks 22nd in the United Kingdom and Spain, and 45th in France;

• A.3: A printout from the cancellation applicant’s website, http://instagram.com/press, entitled ‘Our story’, providing the history and highlights of the evolution of the ‘INSTAGRAM’ brand, which coincide with the facts set out in the Wikipedia article (Exhibit A.1). In addition, it is noteworthy that, as from its launch date in October 2010, the ‘INSTAGRAM’ community had grown to 1 million users by December 2010 and to 10 million users by September 2011. In turn, by February 2013, the ‘INSTAGRAM’ community had grown to 100 million monthly active users;

Exhibit B

Numerous press articles from the United Kingdom media. This part of the evidence contains articles published on the online media, such as BBC News Online, The Times, The Guardian, The Huffington Post United Kingdom and The Independent. In addition, the cancellation applicant provides brief information on the media in question including its circulation/users:

• B.1: Some examples of press articles published on BBC News Online at http://www.bbc.co.uk;

• B.1.2: An article entitled ‘SXSW: Start-ups battle for mobile application downloads’, published on 14 March 2011, mentioning that the start-up Instagram, has developed a photo-sharing application for the iPhone which enables people to take photographs and immediately share them with friends through a Twitter-style feed. The San Francisco-based firm debuted only five months ago and already claims an astounding 2.5m users;

• B.1.4: An article entitled ‘President Barack Obama joins photo site Instagram’, published on 4 January 2012, mentioning that Instagram, which Apple named ‘app of the year’ in 2011, said it was delighted to have the President using its service;

• B.1.6: An article entitled ‘Facebook buys Instagram photo sharing network for $1bn’, published on 10 April 2012, stating that Instagram was only launched in October 2010 – initially just for the iPhone before being offered as an Android app last week. […] It has proven hugely popular. The firm says that it has more than 30 million users uploading more than 5 million new pictures every day;

• B.1.7: An article entitled ‘Facebook’s Instagram deal: Can one app be worth $1bn?’, published on 10 April 2012, mentioning that Instagram’s growth is impressive indeed. The app has some 30 million iPhone users;

• B.1.10: An article entitled ‘Webbys: BBC News website wins People’s Voice news award’, published on 1 May 2012: The breakout of the year award went to Instagram, the photo-sharing startup recently bought by social media giant Facebook;

• B.1.11: An article entitled ‘Facebook’s Instagram bid gets go-ahead from the OFT’, published on 14 August 2012: Since its launch in 2010, Instagram has won more than 50 million users, and nearly half of the world’s top brands use it as part of their marketing strategy;

• B.1.14: Article entitled ‘Instagram gets Facebook-style web profiles for photos’, published on 6 November 2012, mentioning that ‘since its launch in 2010, Instagram has gained more than 100 million registered users, becoming one of the most popular social media services’.

• B.1.24: Article entitled ‘Can Facebook maintain its mobile momentum?’, published on 1 May 2013, including the question Facebook is one of the world’s biggest players in the world social media, but can it fend off competition from the likes of Google and Instagram in the mobile market?

• B.1.25: An article entitled ‘Self-portraits and social media: The rise of the “selfie”’, published on 7 June 2013, providing information that a search on photo sharing app Instagram retrieves over 23 million photos uploaded with the hashtag #selfie […].

• B.1.29: An article entitled ‘App Store “full of zombies” claim on Apple anniversary’, published on 10 July 2013, mentioning that the most popular free iPhone apps are 1. Facebook, 2. Pandora Radio, 3. Instagram […].

• B.2: Press article published in The Sunday Times at http://www.thesundaytimes.co.uk:

• B.2.1: An article entitled ‘Hot stuff: a bargain holiday to the Maldives’, published on 15 May 2011, stating: App of the week: Instagram (iPhone). Instagram is arguably the most efficient and fun photography app out there.

• B.3: Some examples of press articles published in The Guardian at http://www.theguardian.com:

• B.3.1: An article entitled ‘Kevin Systrom, Instagram’s man of vision, now eyes up world domination’, published on 11 October 2013: Instagram’s popularity is notable because it has managed to reach mainstream users who don’t care about Silicon Valley hype. Its simple way of sharing pictures has pulled in 150 million users at a dizzying rate of growth, but that rise has been powered by the wider popularity of apps and mobile-first content;

• B.3.2: An article entitled ‘This year, in fashion, it’s hip to be square…’, published on 13 October 2013, stating that now we can all be fashion editors as Instagram changes the game for the world’s trendsetters.[…];

• B.3.3: An article entitled ‘Blackberry: is this RIP for BBM?’, published on 29 October 2013, mentioning that […] Instagram is now a major social network. […] 150 million monthly active users, 55m photos per day.

• B.3.6: An article entitled ‘Instagram and Pinterest for your arts organisation – live chat’, published on 20 November 2013, stating that Instagram and Pinterest are two of the most popular tools to choose from when thinking about socially spreading imagery online. Not only do they have their own communities, but large ones at that: Instagram recently revealed it has more than 150 million active users […].

• B.5: Some examples of press articles published in The Independent at http://www.independent.co.uk:

• B.5.6: An article entitled ‘Trending: 27 million amateur photographers can’t be wrong’, published on 13 March 2012, stating that the cost of sharing pictures by text might help explain the effervescent rise of Instagram the (until now) free iPhone-based photo filter/sharing app […]. In 2011 the Android system was on around 48 per cent of all smart phones sold (compared to Apple iPhone—only iOS’s 19 per cent). So 27 million photo sharers is just the start for an app which has doubled its user base in three months;

• B.5.7: An article entitled ‘Facebook to buy Instagram for $1bn’, published on 9 April 2012;

• B.5.10: An article entitled ‘Draw Something: Hit app heads for TV screens’, published on 17 June 2012, mentioning that coming to a screen near you: The apps tipped for triumph. Instagram. Popular with the hipster crowd: allows you to take photos and share them in a variety of tints which give a retro look. Thirty million users;

• B.5.22: An Article entitled ‘The billionaire factory: Why Stanford University producers so many celebrated web entrepreneurs’, published on 12 July 2013, Mike Krieger and Kevin Systrom. Instagram. The world’s favourite photo-based social network…;

Exhibit C

Numerous articles from specialised online media and blogs in English, published between 2010 and 2013 on Techcrunch.com, a news website focused on information technology companies, and Mashable.com, a British-American news website, technology and social media blog:

• C.1.10: An article entitled ‘Seven Technologies That Will Rock 2011’, published on 2 January 2011 on techcrunch.com, saying that already Instagram is one of the most popular photo apps in iTunes;

• C.1.15: An article entitled ‘3 Months To The First Million Users, Just 6 Weeks To The Second Million For Instagram’, published on 14 February 2011 on techcrunch.com, stating that in late December […], we noted a huge milestone for photo-sharing app Instagram: a million users. [...], remarkably, it took them only three months to hit the mark. […] well now Instagram’s insane growth has also been made to look small: by Instagram. The service has just hit 2 million users. […] This comes just six weeks after the million mark milestone;

• C.2.23: An article entitled ‘Instagram Tops 25M Users [REPORT]’, published on 2 March 2012 on mashable.com: Instagram has topped 25 million users, becoming the largest mobile-based social network in the world […];

• C.2.24: An article entitled ’12 Incredible Instagram Images’, published on 4 March 2012 on mashable.com: as Instagram’s popularity continues to grow, millions of people around the world are sharing details from their daily lives via the iPhone app.;

• C.2.53: An article entitled ‘Instagram Reaches 150 Million Monthly Active Users’, published on 9 September 2013: Instagram now has 150 million monthly active users with more than 60% of them residing outside of the United States. At last tally in June, the app had 130 million monthly active users. In February, the company reached the 100 million monthly active-users milestone.

Exhibit D

A selection of references from independent blogs/websites in English, published between 2012 and 2013, for example on www.businessinsider.com, www.hollywood.com, www.shinyshiny.tv, gizmodo.com, www.digitalspy.co.uk, www.buzzfeed.com, and www.sofeminine.co.uk.

Exhibit E

A selection of references from Spanish media online, including the newspapers ABC, El País, La Razón, El Mundo, La Vanguardia and El Confidencial, and the TV and radio channels Antenna3, Telecinco, RTVE and Cadena Ser, published between 2012 and 2013. The evidence is in Spanish, with partial English translation.

Exhibit F

A selection of references from independent blogs/websites in Spanish, published between 2011 and 2013, for example www.tecnobita.com, xatakamovil.com, seetio.com, dosbit.com, es.globedia.com, www.genbeta.com.

Exhibit G

A set of evidence, submitted on a CD-ROM, featuring numerous press articles, in English, published between 2011 and 2013 on various UK and other media (also outside of the EU) in relation to ‘INSTAGRAM’. The articles are obtained via the LexisNexis database.

7. By decision of 7 October 2015 (‘the contested decision’), the Cancellation Division upheld the request for a declaration of invalidity and declared the contested EUTM invalid for all the goods. The Cancellation Division reasoned as follows:

• The grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met: (i) the signs must be either identical or similar; (ii) the earlier trade mark must have acquired reputation prior to the filing of the contested trade mark; (iii) the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. The abovementioned requirements are cumulative;

• In the present case, the signs are visually and aurally similar to the extent that they coincide in their initial sequence of letters ‘INSTA’. The marks differ in their final parts ‘GRAM‘ versus ‘PLACE‘. Conceptually, the marks as a whole do not have any meaning in the relevant territory. However, part of the relevant public, with at least a basic knowledge of English, is likely to break the contested sign into ‘INSTA’ and ‘PLACE’. The EUTM proprietor argues that the prefix ’INSTA’ is a combining form indicating instant or quickly produced (Collins English dictionary). This is true for the English-speaking part of the public. It may also be true for consumers speaking other languages as the equivalents of the word ‘instant’ are very similar in most languages and consumers may see an abbreviation with the meaning of ‘instant’ in this prefix. Consequently, for the part of the public that will perceive the meaning ‘instant’ in the prefix ‘insta’, the marks are conceptually similar to that extent. On the other hand, they differ in the concept of ‘place’ in the contested mark for the English-speaking public. For the remaining part of the public the marks are meaningless and the conceptual comparison does not influence the assessment of similarity;

• Overall, the signs are considered similar;

• As regards the claim of reputation by the cancellation applicant, it is recalled that reputation implies a knowledge threshold which is only reached when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The contested trade mark was filed on 11 January 2013. Therefore, the cancellation applicant was required to prove that the trade mark on which the declaration of invalidity is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the cancellation applicant has claimed reputation;

• It is obvious from the evidence that the earlier trade mark has been subject to intensive use in the European Union. Although the software application along with the service was launched in October 2010, which is not very long before the filing date of the contested sign in January 2013, the shortcoming in terms of lack of a long-standing use under a traditional interpretation must be viewed in the context of the extremely fast-developing IT market, especially in the online social networking sector. As amply demonstrated by the evidence (Exhibits B-G), the rise of the brand has been outstanding even for the standards of the sector;

• As claimed by the cancellation applicant (Exhibits A.1 and A.3), and corroborated by numerous independent sources (Exhibits B-F) the number of monthly active users of the software application and the social network service provided under the trade mark ‘INSTAGRAM’ has grown from several million in 2010, to 100 million in February 2013 and 150 million by October of the same year. It is important to emphasize that there is evidence that more than 60% of the customers reside outside of the United States (for example Exhibit C.2.53). Put in the context of the popularity of the website in the United Kingdom, Spain and France (Exhibit A.2) it can be reasonably concluded from the evidence that, at the time of filing of the application for the contested mark (February 2013), a substantial number of the cancellation applicant’s customers were located in the European Union. For instance, according to the ‘Alexa’ ranking, 4% of the cancellation applicant’s website’s visitors were located in the United Kingdom; 2.6% of the visitors were from France and Spain, each. These percentages do not seem very high at first glance but it has to be borne in mind that they represent millions of users in those countries. The position of the website in the ranking by the number of visits in the UK, Spain and France shows an extreme popularity. Moreover, the earlier trade mark enjoys a consolidated position among the leading brands in the social network field. It is attested by diverse independent sources that ‘INSTAGRAM’ is frequently mentioned along with major global players in the social media sector, for example Facebook, Twitter, Pinterest and others;

• Admittedly, the evidence falls short in terms of, for example sales figures and marketing expenditure. On the other hand, there is plenty of evidence in relation to the cancellation applicant’s brand value (in 2012, less than two years after its launch, the application was purchased by Facebook for USD 1 billion). The presence of the mark in press in the EU, in particular the UK, media is vast. It is emphasized that the articles in the major UK media are often not even directly about the earlier mark and the goods or services provided but treat a different topic and mention ‘Instagram’ (often alongside such giants as Facebook or Twitter) only by the way, without explaining any details about what ‘Instagram’ is. This is a very strong indication of the general recognition of this mark among the public, as it is clear from such articles that the newspapers or magazines take it for granted that their readers know ‘Instagram’. With the level of media coverage as shown by the cancellation applicant, any sales figures or marketing expenditures would be rather redundant information;

• In order to establish that a later trade mark will encroach upon the reputation of an earlier mark, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The signs at issue are similar as concluded above. The goods and services in relation to which the cancellation applicant has gained recognition on the relevant market are, essentially, computer software for use in relation to photographs (Class 9) and computer services, including IT support, in relation to a website enabling users to manage their online photograph and social networking accounts (Class 42). The contested computer software [programmes]; software and applications for mobile devices; computer interface software are computer programs with an unspecified purpose. It might as well happen that they are specifically designed and used for modifying the appearance and enabling the transmission of photographs, just as the cancellation applicant’s downloadable computer software. It is actually impossible to clearly separate the cancellation applicant’s goods from the EUTM proprietor’s broader categories of computer software. On the other hand, the contested games software, albeit serving a different purpose – providing amusement to the user of, for example a computer and mobile device ‒ represents a field of entertainment that is adjacent to the one in which the cancellation applicant’s trade mark has gained reputation. This is because taking photos, sharing them with friends, managing social network user accounts and online gaming are commonly carried out for entertainment. Frequently, such online pastimes are offered alongside. Moreover, they are mass consumption goods and services, intended for the public at large. Given that the earlier reputed goods and services and the contested goods are offered to the general public in the same market sector, it is concluded that there is a very close connection between the goods and services at issue.

• Taking into account and weighing up all the relevant factors of the present case, the Cancellation Division concludes that when encountering the contested sign, ‘INSTAPLACE’, the relevant consumers will be likely to associate it with the earlier mark, ‘INSTAGRAM’, that is to say, establish a mental ‘link’ between the signs;

• The similarity between ‘INSTAGRAM’ and ‘INSTAPLACE’ results from the element ‘INSTA’. The overlapping element neither is negligible visually (five identical letters being placed at the beginning of both signs) nor aurally (the same two syllables at the beginning of the pronunciations). The common part is clearly perceptible in both marks. Moreover, both words have the same structure of a single element consisting of three syllables, out of which the first two are identical. The EUTM proprietor claimed that the prefix ‘insta-‘ is commonly used and referred to five trade marks registered in Class 9 with this prefix. This is obviously far from conclusive evidence on the widespread use of the prefix. In addition to the fact that a mere presence in the trade mark registers does not say anything about the real situation on the market, in the present case, even if these few trade marks were used in their respective territories, they are so scarce that it cannot be concluded that the public got accustomed to seeing the marks with such prefix commonly in relation to software. As for the lists of hundreds of applications including ‘INSTA’ available in Apple Store, Google play etc. it is noted that, firstly, from the list it is not clear whether or not there is any type of connection between the cancellation applicant and the listed applications or whether they are used with the cancellation applicant’s consent, and secondly, the majority of the listed application contains the element ‘Insta’ as an independent element followed by all kinds of different words, whereas the contested mark uses the prefix ‘INSTA’ in exactly the same manner as it is used in the earlier mark, i.e. as a prefix in a single element mark where it is followed by one syllable. Therefore, the overall potential of associating the two marks is greater in the case of the contested mark;

• The EUTM proprietor also claimed that the element ‘INSTA’ is weak as it will be perceived as alluding to something ‘instant’. Given that the goods and services relate to editing photos and sharing them over the internet, this prefix may be at least allusive. On the other hand, the word ‘INSTAGRAM’ as such is not an easily comprehensible combination of two words that would, together, have any specific meaning. By virtue of the huge reputation that the ‘INSTAGRAM’ mark has in relation to photo-related software tools and services, it is considered that the public does not analyse the meaning of different parts of this mark but perceives it as a whole as the name of the famous application and social network. Therefore, any linguistic connotations in connection of the prefix ‘INSTA’ would be eclipsed in the perception of the relevant public when seeing the sign ‘INSTAPLACE’ and the public will more readily perceive a connection with ‘INSTAGRAM’ before contemplating the meaning of ‘INSTA’;

• It is recalled that the degree of similarity of the signs required under Article 8(5) EUTMR differs from the one required under Article 8(1)(b) EUTMR. In particular, whereas the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53). Taking into account and weighing up all the relevant factors of the present case, in particular the very high degree of closeness of the contested goods to the goods and services for which the earlier mark is reputed, the high degree of the reputation of the earlier mark and the coinciding element ‘insta’ placed at the beginning of both single-word and three-syllable marks, the Cancellation Division concludes that when encountering the contested sign, ‘INSTAPLACE’, the relevant consumers are likely to be reminded of the earlier reputed mark, ‘INSTAGRAM’, that is to say, they are likely to establish a mental ‘link’ between the signs;

• The evidence submitted by the cancellation applicant demonstrates that the images associated with the ‘INSTAGRAM’ brand are, inter alia, those of beautiful moments in one’s life shared, in a fast and fun way, with family, friends and even with strangers. The photos may be made with a mobile telephone and immediately shared on the internet using the application. According to the EUTM proprietor, the product named ‘INSTAPLACE’ is an application that tags pictures with timestamp and geolocation data acquired from mobile device. It states that the product is complementary to Instagram in the sense that the photographs taken by the user of the application can be published in this social network. It provides a printout from Google Analytics showing that almost 30% of the publications are indeed made through Instagram. When consumers are faced with a software application for the purposes of sharing photographs which are tagged with the location where they were taken called ‘INSTAPLACE’, it is very likely that the reputed application for editing and sharing photographs ‘INSTAGRAM’ will come to their minds and they may even assume that the two are somehow connected, given the very similar functions of the two products. The consumers are thus likely to project the images they have connected with the reputed earlier mark to the contested one, to the advantage of the EUTM proprietor;

• It should be noted that the rationale of Article 8(5) EUTMR is that a mark can also have other functions and also act as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as, for example, luxury, lifestyle, exclusivity, adventure, youth, and that it can have an inherent economic value which is independent of and separate from that of the goods and services for which it is registered (22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 35). The earlier mark conveys a message of a dynamic and successful social network, the connection and sharing of one’s life moments with others through photographs. The EUTM proprietor’s product enables consumers to tag photographs with the location where they were taken. They can then be shared through social networks such as Instagram, as specifically suggested on the EUTM proprietor’s website. Thus, it is precisely those images and feelings relating to sharing experiences and pictures that can be transferred to the contested mark on account of the link that the consumers make between it and the earlier one. The image of a successful and fast-growing software application may be transferred to the contested mark as well, in particular given that it will be seen on software, too, and, since such an image is undoubtedly a positive stimulation for purchase or use, this would enhance the success of the goods bearing the contested mark without a proportional effort on the part of the EUTM proprietor. Thus, the contested mark would take advantage of the reputation of the earlier mark. The use and sales of the products of the contested mark may increase without any special efforts on the EUTM proprietor’s part simply because of the connection with the earlier reputed mark that may be created in the minds of consumers, and the positive connotations that the earlier mark conveys. On the basis of the above, the Cancellation Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark, as regards its use in relation with all the contested goods;

• The EUTM proprietor argues that unfair advantage cannot be just assumed but that the cancellation applicant must provide evidence that it will occur. The Cancellation Division notes that the cancellation applicant is indeed obliged to prove that there is a serious risk that such an injury (taking unfair advantage) will occur in the future (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 38, 07/12/2010, T‑59/08, Nimei La Perla Modern Classic, EU:T:2010:500, § 33, 06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53 and 25/01/2012, T‑332/10, Viaguara, EU:T:2012:26, § 25). Such a finding may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (10/05/2007, T‑47/06, Nasdaq, EU:T:2007:131, § 54, 16/04/2008, T‑181/05, Citi, EU:T:2008:112, § 78, and 14/11/2013, C‑383/12 P, Répresentation d’une tête de loup, EU:C:2013:741, § 42-43). The matter to be proved is the likelihood of a future event and, by definition, the cancellation applicant’s arguments cannot in themselves amount to evidence. Therefore, it will often be necessary to base certain conclusions on legal presumptions, that is, on logical assumptions or deductions resulting from the application of the rules of probability to the facts of the specific case. It is clear from case-law that the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 54, 18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 44, and 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 67-69). In the present case, the cancellation applicant has put forward a coherent line of argumentation including deductions resulting from the normal functioning of markets and rules of probability. The Cancellation Division considers, for the reasons explained above, that the cancellation applicant put forward sufficient arguments and evidence in order for the conclusion to be drawn that the use of the contested mark would take unfair advantage of the reputation and/or distinctive character of the earlier mark;

• The EUTM proprietor argued that, during the first years and development of ‘INSTAGRAM’ (2010 until August 2013), the operator of the service had adopted a market strategy based on stimulation of the surrounding ecosystem to raise popularity of its own product. The Instagram operators gave their approval to the developers of the surrounding applications to use either the prefix ‘INSTA’ or the suffix ‘GRAM’ to name their products to be used with Instagram application. According to the EUTM proprietor, for three consecutive years ‘INSTAGRAM’ API (API stands for ‘application programming interface’) Trademark and Brand Guidelines clearly indicated, inter alia, that while you cannot use the word ‘Instagram’ or ‘IG’ in your product’s name, it’s ok to use one (but not both) of the following: ‘Insta’ or ‘gram’. Those terms resulted in a number of applications, the names of which use the said elements, which were launched on the market. The EUTM proprietor notes, however, that ‘INSTAGRAM’ Trademark and Brand Guidelines were changed in August 2013 and from that time on, the application developers have been discouraged to use either ‘INSTA’ or ‘GRAM’ in the names of their software applications. Thus, at the time of filing, the EUTM proprietor had no reason to believe that the owner of the Instagram mark acknowledged and approved third parties’ software applications having a part of its trade mark included in their names. As a result, the argument of due cause must fail.

8. On 7 December 2015, EUTM proprietor filed an appeal against the contested decision and, on 7 February 2016, submitted the statement of grounds.

9. On 31 March 2016, the cancellation applicant filed its observations in reply to the appeal.

Submissions and arguments of the parties

10. The EUTM proprietor requests the Board to annul the contested decision and reject the request for a declaration of invalidity of the contested EUTM. Its arguments may be summarised as follows:

Weak components of the earlier mark

• The assessment of the similarity of the signs has to be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant components. The common element of the conflicting signs, ‘INSTA’, is descriptive and cannot be considered distinctive. Even prior to the launch of ‘INSTAGRAM’ services, the element ‘INSTA’ has been widely used, not only in general but also in relation to software. The EUTM proprietor filed examples of trade mark registrations and of applications available in Apple or Google Store which are using the ‘INSTA’ element. The Office found that it was not clear whether the INSTA-prefixed applications had any connections with Instagram or whether their use was based on the Instagram’s consent. However, the aspect of general consent given by Instagram to use the prefix ‘INSTA’ was discussed separately. Here, the aim of this evidence was to show that the use of ‘INSTA’ in relation to mobile applications is widespread;

• The assessment of the similarity should also take into account the cancellation applicant’s actions whereby the cancellation applicant incited others to use the terms ‘Insta’ or ‘Gram’. Those actions caused the decrease of the distinctive character of the earlier mark and/or its components and could even be seen as a trade mark abandonment;

• The comparison of signs should thus take into account a very weak distinctive character of the earlier mark;

• On its own website the cancellation applicant admits that its trade mark was coined from the words ‘instant’ and ‘telegram’. It acknowledges thus that the components of the mark are weak;

• Despite this, the cancellation applicant has undertaken a campaign against the EUTM proprietor and attempts to extend its monopoly beyond its legal limits;

The alleged reputation of the earlier mark

• The Cancellation Division’s finding that the earlier mark enjoyed reputation was solely based on the ‘intensity of use’. Even if ‘brand image’ may arise from or be influenced by intensive use, considering all the circumstances of use of the earlier mark, reputation in the present case cannot be established on the intensity of use only;

• It has to be recalled that the reputation must predate the date of the filing of the contested mark (here 11 January 2013). In the case at stake, numerous pieces of reputation, notably Wikipedia printouts (10 March 2014 while the entry has been subject to many modifications between on 11 January 2013 and 10 March 2014) and Alexa printouts (dated 7 April 2014) postdate the relevant date. There are many other examples of evidence which does not only postdate the relevant date but also does not relate to the relevant period at all (e.g. B.1.24, B.1.25, B.1.29, B.3.1, B.3.2, B.3.3., B.3.6, B.5.22, C.2.53). This only confirms that the Cancellation Division did not filter the voluminous evidential material properly. The Alexa report was directly relied on by the Cancellation Division. The EUTM proprietor does not deny extensive use and popularity of INSTAGRAM. However, it has not been shown that the mark gained reputation prior to 11 January 2013;

• The Cancellation Division stated that the earlier mark enjoyed a high degree of recognition among the general public but it failed to acknowledge that the degree of recognition was stimulated by an ecosystem of complementary software applications which use the element ‘INSTA’ or ‘GRAM’ through the API licencing consent. The assessment of reputation should take into account these specific factors;

• The rationale behind Article 8(5) EUTMR which leads to the extended level of trade mark protection aims to define the reputation as a factor which results from other values of a trade mark rather than indication of the origin. Such values aim at protecting advertising function and the investment made into creating a certain brand image. Existence of a certain ‘brand image’ is essential. It is true that ‘brand image’ may arise from or be influenced by intensive use, but in view of all the facts and the nature of use, reputation in the present case cannot be established on the basis of intensive use only;

• All facts relevant to the particular case must be taken into account when assessing the reputation of the earlier mark (14/09/1999, C‑375/97, Chevy, EU:C:1999:408). It is submitted that the way the earlier mark was used by the cancellation applicant has led to a situation where the ‘brand image’ is not clearly related to the intensity of use. The high degree of recognition among the relevant public, attributed by the Cancellation Division to the earlier mark, should be viewed in regards to knowledge of the very specific market by the relevant public and its expectations with respect to software naming. The relevant public consisting of international users of vendors such as Apple Store, Google Playstore, Amazon or Windows stores would not link ‘INSTAPLACE’ with ‘INSTAGRAM’ as this public would have a thorough knowledge of the mobile software naming scheme and been exposed to hundreds of applications in the relevant market that use the ‘INSTA’ or ‘GRAM’ element. As the existence of such applications is neither coincidental nor unjustified, the relevant public’s knowledge of the market, its foundations and interactions between software producers should also be considered as a relevant factor when assessing the existence of reputation;

• According to the established case-law, it is only where there is a sufficient degree of knowledge of that mark that the public, when confronted by the later trade mark, may possibly make an association between the two trade marks, and that the earlier trade mark may consequently be damaged (14/09/1999, C‑375/97, Chevy, EU:C:1999:408). In view of all these considerations, the association between two trade marks does not lead to damage to the earlier mark as the association is non-existent. The Cancellation Division’s finding as to the link was based on wrong premises and its wrong assessment of the distinctive character of the earlier mark;

• The Cancellation Division considered that the common element ‘INSTA’ is sufficient for the consumers to associate the marks and bring to mind the image associated with the earlier mark (‘beautiful moments in one’s life shared in a fast and fun way’). However, the relevant consumer of mobile applications does not associate the ‘INSTA’ element with ‘INSTAGRAM’ as the way the earlier mark has been used influenced a very low level of signs association;

• The Cancellation Division, when considering arguments on the detriment to the distinctive character or the repute of the earlier mark, pointed only to ‘unfair advantage’. However, the risk of unfair advantage is a factor that requires evidence of a future risk. Nevertheless, the Cancellation Division’s assessment was strictly based on hypothetical reasoning of a future existence of risk of confusion between the types of software at issue but global evaluation of the existence of such a risk was not considered by the Cancellation Division. Consequently, likelihood of confusion should be an important factor in assessing ‘unfair advantage’;

• In accordance with the case-law, the proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future (27/11/2008, C‑252/07, Intel, EU:C:2008:655). In the present case, the average consumer of the goods at issue is aware of circumstances which led to the situation on the relevant market where there are hundreds of mobile apps using ‘INSTA’ and ‘GRAM’ elements. They would not link the contested mark to ‘INSTAGRAM’;

• Finally, the assessment of the due cause in respect of the ‘INSTA’ element also requires a global approach as the use of this element should be free from any monopolies. The distinctive character of the marks derive from their integrity as the coexistence of signs with the ‘INSTA’ element was to a certain point not only accepted but also stimulated and justified by the actions of the cancellation applicant. It is not only an issue of a private contract between the parties which is no longer in force. The existence of this contract has led to the situation in which the use of the element ‘INSTA’ has become commonplace. Therefore, Article 8(5) EUTMR is not applicable in the present case;

• The name ‘INSTAPLACE’ used in software is consistent in the naming line and scheme developed by the cancellation applicant. The first instance where the ‘INSTA’ prefix was adopted by the EUTM proprietor was for ‘INSTAWEATHER’ which was developed by the EUTM proprietor in 2011 i.e. before even the cancellation applicant registered its earlier trade mark. This confirms the EUTM proprietor’s bona fide intentions. The amendment of the cancellation applicant’s ‘Terms of Use’ to the effect that it withdrew its authorisation to use the ‘INSTA’ and ‘GRAM’ elements only took place in August 2013 and was widely questioned, especially within the tech-community (several articles, notably ipkat blog, are enclosed). This confirms that, at the time of the filing, the EUTM proprietor had due cause to use the elements ‘INSTA’ and ‘GRAM’ as the cancellation applicant expressly consented to such use;

• The validity of the cancellation applicant’s authorisation and the ‘Terms of Use’ authorising such use were in force until August 2013.

11. The cancellation applicant requests the Board to dismiss the appeal and to confirm the contested decision. Its arguments may be summarised as follows:

• The present case forms part of a global trade mark conflict between the parties. The EUTM proprietor filed for registration of the following trade marks ‘SELFIEGRAM’, ‘TRAVELGRAM’, ‘INSTAKIDS’, ‘INSTAPLACE’, ‘INSTAWEATHER’, ‘INSTAWEATHER PRO’. In all these six cases, EUIPO’s first instance delivered decisions in favour of Instagram LLC;

• It was shown by the extracts from the EUTM proprietor’s website that the EUTM proprietor represents its trade marks as clearly divided into two elements, either by using colours, different font or capital letters: e.g. #selfiegram; InstaWeather; InstaPlace. The EUTM proprietor also expressly refers to ‘INSTAGRAM’ (e.g. ‘InstaWeather is your weather overlay App for Instagram’);

• Even if each case has to be examined on its own merits, it is important to stress that all these trade marks share their prefix or suffix with ‘INSTAGRAM’ and they have been applied for, registered or used for the identical goods. That makes the likelihood of unfair advantage of the distinctive character and repute of the earlier mark very high;

• The EUTM proprietor insists in that the element ‘INSTA’ is descriptive or weak in relation to the goods at issue. This issue was fully addressed in the contested decision and the cancellation applicant refers to the reasoning provided by the Cancellation Division. It has to be stressed that ‘INSTAGRAM’ as such is distinctive for the relevant goods. Furthermore, by virtue of the huge reputation that the earlier mark enjoys in relation to photo-related software tools and services, the public does not analyse the meaning of the parts of this reputed mark but perceives it as a whole. Therefore, any possible linguistic connotations of the prefix ‘INSTA’ will be eclipsed in the perception of the relevant public when seeing the sign ‘INSTAPLACE’ and the public will more readily perceive a connection with ‘INSTAGRAM’ before contemplating a possible meaning of ‘INSTA’;

• In relation to the EUTM proprietor’s argument that the signs should be compared in their entirety, it is recalled that both signs are formed by a single word and contain an identical sequence of five letters in the same order and in the same position, at the beginning of the sign. The signs have, therefore, a certain degree of similarity;

• As regards the reputation of the earlier mark, the cancellation applicant filed extensive evidence of reputation. Contrary to the EUTM proprietor’s argument, the Cancellation Division’s finding of reputation is not based on ‘intensity of use only’. The evidence filed shows the huge popularity acquired by ‘INSTAGRAM’, its high degree of recognition among the public, its very high financial value and, in short, the high degree of knowledge of the mark among the public;

• The EUTM proprietor seems to affirm that, in order to evaluate whether the similarity of the signs is sufficient to find a link or association between them, the Cancellation Division should have evaluated whether there was a likelihood of confusion between them. This view is wrong; the application of Article 8(5) EUTMR does not require the signs to be confusingly similar. As found by the Cancellation Division, all the conditions for the association of the marks are met;

• Insofar as the EUTM proprietor argues that the Cancellation Division based its finding as to unfair advantage on hypothetical reasoning of eventual existence of risk of confusion, it is recalled that, in the case at hand, the cancellation applicant did put forward a coherent line of arguments showing what the unfair advantage (and the non-examined detriment) would consist of and how it would occur. The Cancellation Division thus correctly assessed the unfair advantage in the present case. The cancellation applicant fully subscribes to the findings of the Cancellation Division;

• As regards the EUTM proprietor’s reference to the cancellation applicant’s ‘Terms of Use’, allegedly allowing use of ‘INSTA’ and ‘GRAM’ elements, the current version of the ‘Terms of Use’, in force as of beginning 2013, does not contain such an authorisation. Thus, at the time of the filing, the EUTM proprietor had no reason to believe that the cancellation applicant approved third parties’ software applications having a part of its trade mark included in their names. Therefore, this argument cannot serve as a valid defence;

• Additionally, the cancellation applicant refers to its previous submissions based on Article 8(1)(b) EUTMR and maintains that there is also a likelihood of confusion in the present case.

Reasons

12. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.

Article 53(1)(a) and Article 8(5) EUTMR

13. A EUTM shall be declared invalid, inter alia, where the conditions set out in Article 8(5) EUTMR are fulfilled, namely, (i) the marks at issue must be identical or similar; (ii) the earlier mark must have a reputation in the relevant territory; and (iii) there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (22/03/2007, T–215/03, Vips, EU:T:2007:93, § 34, 35; 11/07/2007, T‑150/04, Tosca Blu, EU:T:2007:214, § 54, 55).

Similarity of the signs

14. The signs at issue, ‘INSTAPLACE’ and ‘INSTAGRAM’ are both single word signs of similar length. They share an identical sequence of letters ‘INSTA-’ in their initial parts. They differ in the second parts: ‘-PLACE’ and ‘-GRAM’. As a result of the coincidence in the initial part, the marks are visually similar to an average degree.

15. Aurally, the earlier sign is pronounced ‘IN-STA-GRAM’ while the contested sign depending on the language, can be pronounced as ‘IN-STA-PLEIS’ (in three syllables, in accordance with its English pronunciation) or as ‘IN-STA-PLA-CE’ (in four syllables e.g. when pronounced by a Polish consumer without any knowledge of English). In any case, the first two syllables are identical and, as a result, the signs are aurally similar to this extent.

16. Conceptually, the earlier mark as a whole has no meaning. The element ‘insta’ may be seen as alluding to ‘instant’. However, the earlier mark is not likely to be broken into ‘INSTA’ and ‘GRAM’ as these terms are not immediately recognisable. ‘GRAM’ has no relevant meaning that would occur to the consumers in relation to the goods and services at issue. The contested sign does not have a meaning but it is more likely to be broken into ‘INSTA’ and ‘PLACE’ by the English-speaking public as the word ‘PLACE’ has a clear meaning and will be understood as meaning a geographical or physical location. Once singled out from the term, the element ‘INSTA’ may also be perceived as alluding to ‘INSTANT’. As the signs as a whole do not have a clear meaning and they have the common element ‘INSTA’ and differ the elements ‘PLACE’ and ‘GRAM’, the overall conceptual comparison will not largely affect the similarity of the signs.

17. Overall, the signs are considered similar.

Reputation of the earlier mark

18. The Cancellation Division found that the earlier mark enjoyed reputation for all the goods and services for which the reputation was claimed i.e.:

Class 9 ‒ Downloadable computer software for modifying the appearance and enabling transmission of photographs;

Class 42 ‒ Providing a web site that gives users the ability to upload photographs; technical support services, namely, providing help desk services in the field of computer software, namely, providing users with instructions and advice on the use of downloadable computer software, provided online and via e-mail; computer services, namely, providing an interactive website featuring technology that allows users to manage their online photograph and social networking accounts.

19. On the basis of the evidence listed at paragraph 6 above, the Cancellation Division considered that the earlier mark has been extensively used for computer software for use in relation to photographs and for computer services, including IT support, in relation to a website enabling users to manage their online photograph and social networking accounts. In its view, the ‘INSTAGRAM’ brand enjoyed an image associated with ‘those of beautiful moments in one’s life shared, in a fast and fun way, with family and friends’ as well as that of a ‘successful and fast-growing software application’.

20. The EUTM proprietor argues that the Cancellation Division’s finding of reputation of the earlier mark was only based on the intensity of its use. It also criticizes the Cancellation Division for taking into account the evidence predating the filing date of the contested application and not directly referring to this period.

21. The Board recalls that, in order to satisfy the requirement of reputation, an earlier mark must be known to a significant part of the public concerned by the goods or services covered by it. In examining that condition, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the earlier mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it, without there being any requirement for that mark to be known by a given percentage of the relevant public or for its reputation to cover all the territory concerned, so long as that reputation exists in a substantial part of that territory (19/06/2008, T‑93/06, Mineral Spa, EU:T:2008:215, § 33).

22. In the present case, the cancellation applicant submitted various extracts from well-known newspapers and magazines (such as The Guardian, The Huffington Post United Kingdom, BBC News Technology and BBC News Business, The Independent). Contrary to the EUTM proprietor submissions these excerpts do not merely show the intensity of use of the earlier mark. When the content of these articles is considered, it can be seen that they report on the huge success of ‘INSTAGRAM’, its popularity among the users, its value and the image it has among the users.

23. It is true that some of that evidence (notably the Alexa report expressly referred to by the Cancellation Division) postdates the filing date of the contested application (11 January 2013). However, a great part of the evidence submitted is dated prior to January 2013. It appears that ‘INSTAGRAM’ was launched in October 2010 as an application for sharing photos. Even if it is only around two and a half years before the filing of the contested application, its popularity grew very rapidly, to the extent of becoming reputed within less than a year. It became extremely wide spread among social media users. It had one million users by the end of 2010, ten million users by September 2011 and a hundred million monthly active users by February 2013. When Facebook purchased the ‘INSTAGRAM’ application in April 2012, its value was USD 1 billion. This extremely high price (widely commented on in the press excerpts filed by the cancellation applicant) was a direct corollary of ‘INSTAGRAM’s’ success and worldwide reputation at the time of the deal. Even if these numbers are global and not specifically related to the European Union, considering the nature of the business (an online application) these figures can be easily extrapolated to the European Union.

24. Thus, contrary to the EUTM proprietor’s submissions, the cancellation applicant filed sufficient evidence relating to the period 2010-2012 to confirm the Cancellation Division’s finding that the earlier mark enjoyed reputation before 11 January 2013. In particular, reference is made to all the publications referring to the acquisition of ‘INSTAGRAM’ by Facebook.

25. The extent of use and the popularity of the ‘INSTAGRAM’ application leads the Board to the conclusion that the reputation of the sign in relation to the goods and services concerned has been demonstrated.

26. It is in fact hard to imagine a computer (tablet or smartphone) and social media user who would not have heard of ‘INSTAGRAM’ and a significant part would use it on a daily basis to share and view photos instantaneously.

27. It is not contested that the words ‘instant’ and ‘telegram’ can be at the root of the term ‘INSTAGRAM’. However, as a significant reputation has been established for ‘INSTAGRAM’ in relation to photo sharing software and services, consumers are likely to associate ‘INSTAGRAM’ immediately with the brand and not decompose the term.

Relevant public

28. As regards the relevant public, it should be recalled that, according to the case-law, the existence of a link between the conflicting marks, on which the abusive conduct envisaged by Article 8(5) EUTMR is based, assumes that the public concerned by the goods and services for which the marks are registered is the same or ‘overlaps’ to a certain extent (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 46-49).

29. In the present case, the relevant public of both the earlier goods and services and the contested goods is the same. It consists of average computer and social media users in the European Union.

Link

30. In order to establish whether the earlier mark with a reputation may be adversely affected by the risk of one of the types of injury referred to in that provision one has to establish first whether the relevant public would establish a link between the marks at issue.

31. The stronger the distinctive character of the earlier mark, whether inherent or acquired through the use which has been made of it, the more likely it is that, confronted with a later identical or similar mark, the relevant public will call that earlier mark to mind (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 53-55). The existence of such a link in the mind of the public constitutes a condition which is necessary but not, in itself, sufficient to establish the existence of one of the types of injury against which Article 8(5) EUTMR ensures protection for the benefit of marks with a reputation (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 31, 32).

32. The existence of such a link must be subject to an overall assessment, taking into account all factors relevant to the circumstances of the case, including the degree of similarity between the marks at issue; the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of the likelihood of confusion on the part of the public (12/03/2009, C‑320/07 P, Nasdaq, EU:C:2009:146, § 45; 30/04/2009, C‑136/08 P, Camelo, EU:C:2009:282, § 26; see also, by analogy, 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42). A link between the conflicting marks is necessarily established when there is a likelihood of confusion, that is to say, when the relevant public believes or might believe that the goods or services marketed under the earlier mark and those marketed under the later mark come from the same undertaking or from economically-linked undertakings (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 57).

33. In the present case, the reputation of the earlier mark in relation to photo-sharing software and related services is very high and the brand is immediately recognisable. The contested goods are identical to the earlier goods and the relevant public is the same. The signs are similar as they share the initial sequence of five letters ‘INSTA’ and only differ in their second part. It must be recalled here that the consumer normally attaches more importance to the first part of words and, therefore, this coincidence is unlikely to be disregarded.

34. Furthermore, it is observed that the earlier mark enjoys reputation in relation to photo-sharing software while the contested sign is registered for software and appears to be used, as shown by the cancellation applicant, for a mobile application which tags pictures with timestamp and geolocation data. As a result, the photos that the users may publish on social media (including ‘INSTAGRAM’) will contain additional information regarding time and place. The EUTM proprietor had in fact demonstrated before the Cancellation Division that over 20% of users tagging their photos with ‘INSTAPLACE’ would then post the photo on ‘INSTAGRAM’. When consumers are faced with a software application for the purposes of sharing photographs which are tagged with the location where they were taken called ‘INSTAPLACE’, it is very likely that the reputed application for editing and sharing photographs ‘INSTAGRAM’ will come to mind and that they may even assume that the two are somehow connected, given the very similar functions of the two products.

35. The EUTM proprietor argued that the element ‘INSTA’ is commonly used in relation to software. In order to demonstrate this, the EUTM proprietor referred to five trade marks containing this sequence of letters and registered in the European Union in Class 9. In the course of proceedings before the Cancellation Division the EUTM proprietor also submitted a link to a list of online applications containing the word ‘insta’. The EUTM proprietor stressed that a high number of applications using the word ‘insta’ is a direct result of the cancellation applicant’s policy to encourage software developers to use this term. This factor should be taken into account when examining the link between the marks and the claim of unfair advantage.

36. The existence of five registered trade marks containing the term ‘INSTA’, even assuming that they were used, is a ‘far cry’ from showing that the term is commonplace for software related goods and services. The list of applications using this term from the www.appannie.com website is indeed long. The Board thoroughly reviewed the first hundred applications on this list. It has to be noted that none of them contains ‘INSTA-’ as an initial part of the word as in ‘INSTAGRAM’ or ‘INSTAPLACE’. In the vast majority of the apps, the term ‘INSTA’ is a separate word, placed before a noun and, therefore, indeed likely to be read as an adjective, a short form of ‘instant’ (e.g. ‘Insta Booth’, ‘Insta Scanner’, ‘Insta Painter’, ‘Insta Postcard’). In some cases, the word Insta is joined to the noun with a hyphen thus also allowing an automatic decomposition of the term (e.g. ‘Insta-List’, ‘Insta-Light’, ‘Insta-Zen’). Therefore, the examples given by the EUTM proprietor are not comparable to the case at issue and do not mitigate against finding a link between ‘INSTAGRAM’ and ‘INSTAPLACE’ in the present case.

37. The EUTM proprietor’s allegation that it was the cancellation applicant’s own policy that led to a decrease of the distinctive character of the components of its trade mark by allowing other traders to use ‘INSTA’ and ‘GRAM’ will be dealt with in more detail below. As regards the current section, analysing the link, the Board finds that the EUTM proprietor failed to demonstrate that previous policy would result in the prefix ‘INSTA-‘ being widely used and therefore excluding the link on the basis of this element alone.

38. Considering the above, the Board concludes that taking into account the similarity between the marks at issue, the strength of the reputation of the earlier mark which may be regarded as high and the overlap between the relevant public for the conflicting goods, there exists a link between the marks at issue for the purposes of Article 8(5) EUTMR.

Unfair advantage

39. As regards the concept of ‘taking unfair advantage of the distinctive character or the repute of the trade mark’, also referred to as ‘parasitism’ or ‘free-riding’, that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation or riding on the coat-tails of the mark with a reputation. It follows that advantage taken by a third party of the distinctive character or the repute of the mark may be unfair, even if the use of the identical or similar sign is not detrimental either to the distinctive character or to the repute of the mark or, more generally, to its proprietor (18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 41, 43).

40. The existence of an unfair advantage of the reputation of the earlier mark may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (29/03/2012, T‑369/10, Beatle, EU:T:2012:177, § 62 and 10/05/2007, T‑47/06, Nasdaq, EU:T:2007:131, § 54 and the case-law cited therein). Thus, Article 8(5) EUTMR must be interpreted as meaning that the taking of unfair advantage of the distinctive character or the repute of a mark, within the meaning of that provision, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute or, more generally, to the proprietor of that trade mark. The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image (see, by analogy, 12/07/2011, C‑324/09, L’Oréal-eBay, EU:C:2011:474, § 50).

41. In order to determine whether use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue, and the nature and degree of proximity of the goods or services concerned.

42. It is clear from case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (see, to that effect, 27/11/2008, C–252/07, Intel, EU:C:2008:655, § 67-69 and 18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 44).

43. In the present case, the earlier mark ‘INSTAGRAM’ gained a very significant reputation among the relevant public in relation to photo-sharing software and related services. It became a very powerful and attractive brand in the digital world in a very short space of time. It is indeed associated with the possibility of instantly sharing a photo.

44. The contested goods are identical to the ones for which the earlier mark enjoys reputation and, as it has been shown in the course of these proceedings, that the EUTM proprietor product is, in essence, a software application which tags photos with timestamps and geolocation data. Therefore, it is highly probable that the relevant public would associate the marks and perceive ‘INSTAPLACE’ as a particular application to add tags on photos to be shared on social media. In the Board’s view, it is in fact highly probable that the relevant public would assume that both marks come from the same or related entity (leading to likelihood of confusion). A fortiori, the same consumers can be prompted to use ‘INSTAPLACE’ because of their association with the reputed ‘INSTAGRAM’ mark and project the images they have connected with the reputed earlier mark (images of ‘beautiful moments in one’s life shared, in a fast and fun way, with family and friends’ as well as the image of a ‘successful and fast-growing software application’) onto the contested one, thus creating an advantage for the EUTM proprietor. As a result, the contested mark is riding on the coat-tails of the earlier mark, thus unduly benefitting from the power of attraction of ‘INSTAGRAM’ and the marketing efforts made by the proprietor of the earlier mark in creating and maintaining its image.

45. This conclusion is additionally strengthened by the fact that the EUTM proprietor adopted a series of trade marks incorporating the element ‘INSTA’ or ‘GRAM’ i.e. ‘SELFIEGRAM’, ‘TRAVELGRAM’, ‘INSTAKIDS’, ‘INSTAPLACE’, ‘INSTAWEATHER’, ‘INSTAWEATHER PRO’. The EUTM proprietor provided no plausible explanation for this choice of trade marks and, viewed in their ensemble, they bring to mind the ‘INSTAGRAM’ reputed trade mark even more evidently than the ‘INSTAPLACE’ trade mark viewed alone.

Due cause

46. An action based upon Article 8(5) EUTMR cannot succeed if the EUTM proprietor can show that it had due cause for using the mark applied for. This has been taken to mean that the EUTM proprietor is obliged to use the mark such that notwithstanding the unfair advantage which might be taken of the earlier mark, the EUTM proprietor cannot reasonably be required to abstain from its use.

47. In the present case, the EUTM proprietor relied on the previous policy of the cancellation applicant, who expressly authorised others, in particular other software developers, to use the elements ‘INSTA’ or ‘GRAM’ to mark their products. It is undisputed that, on 6 October 2011, INSTAGRAM API ‘Terms of Use’ staed the following:

‘While you cannot use the word “INSTAGRAM”, “IG” or any variation in your product name, it’s ok to use one (but not both) of the following “INSTA” or “GRAM”.’

48. The EUTM proprietor submits that, by applying this policy, the cancellation applicant incited others to develop products and use the terms ‘INSTA’ and ‘GRAM’. As a consequence, the cancellation applicant itself led to the dilution of these terms.

49. The EUTM proprietor does not, however, bring forward actual, concrete examples of companies or other software developers that were induced or otherwise incited to develop their products and use the terms ‘INSTA’ and ‘GRAM’.

50. Furthermore, there is no evidence that this policy was still in place in January 2013, as the ‘Terms of Use’ were amended and, both the version provided by the EUTM proprietor (dated 1 January 2013) and the version submitted by the cancellation applicant (dated 22 August 2012) state the following:

‘You are not allowed to use the word “Instagram”, “IG” or any variation in your product name, domain name, or images.’

51. The versions do not include any express authorisation to use ‘Insta’ and ‘Gram’ to name the products developed.

52. A further amendment of the ‘Terms of Use’ led to a specific prohibition of use of ‘Insta’ and ‘Gram’ elements by the cancellation applicant:

‘Don’t use “INSTAGRAM”, “IG”, “Insta” or “Gram” in your app or product name or domain name.’

53. Regardless of whether private agreements between the parties and, general terms of contract, such as the ‘Terms of Use’ in this instance, are binding for the Board’s assessment of application of Article 8(5) EUTMR, or whether the existence of an express authorisation to use the ‘Insta’ and ‘Gram’ elements by others, could indeed be considered as constituting due cause within the meaning of this provision, the Board observes that no such arguments can prevail in the present case. The contested EUTM was filed on 11 January 2013. The EUTM proprietor has not demonstrated that, at the time of the filing of the contested EUTM, the express authorisation to use the ‘INSTA’ element was in force.

54. Although the EUTM proprietor argues that the amendment of the ‘Terms of Use’ took place in August 2013, it rather appears that this is the date of the second amendment. As it is for the party claiming due cause to demonstrate its existence, (actori incumbit probatio), it was for the EUTM proprietor to show that the explicit authorisation to use the ‘INSTA’ element despite its links to ‘INSTAGRAM’ existed at the time of the filing and it was for that same party to take all due care to ensure that it did not infringe or otherwise encroach upon the trade mark rights of any earlier right holder (i.e. the cancellation applicant).

55. While the previous API policy of the cancellation applicant expressed in its ‘Terms of Use’, as in force on 6 October 2011, may have contributed to inciting the EUTM proprietor to start to develop and promote its product under the name ‘INSTAPLACE’ in the initial period immediately after October 2011, the Board has no jurisdiction to take a position on the validity of claims based on legitimate expectations (which is a matter for the relevant national civil courts) and can merely limit itself to noting that these circumstances are insufficient (for the reasons given in the preceding paragraphs) to establish due cause within the meaning of Article 8(5) EUTMR in the proceedings before EUIPO.

56. In view of the above considerations, the Board concludes that the conditions of Article 8(5) are fulfilled as the contested mark can be associated with the earlier mark and, in view of the identity of the goods, it is capable of taking unfair advantage of the well-established reputation of the earlier trade mark and the considerable investment undertaken by the cancellation applicant to achieve that reputation. No due cause existed at the time the contested EUTM was filed. Accordingly, the appeal is dismissed and the contested decision is confirmed.

Costs

57. Since the EUTM proprietor is the losing party in the appeal proceedings within the meaning of Article 85(1) EUTMR, it must bear the fees and costs pursuant to Article 85(6) EUTMR. It follows that it must bear the cancellation applicant’s representation costs in the appeal proceedings in the amount of EUR 550 specified in Rule 94(7)(d) CTMIR.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the EUTM proprietor to bear EUR 550 for the cancellation applicant’s representation costs in the appeal proceedings.

Signed G. Humphreys

Signed A. Pohlmann

Signed V. Melgar

Registrar: Signed H.Dijkema