By Claire Lehr and Tara Mirjani-Arjenan

  • The UKIPO dismissed Instagram’s opposition against the mark SOUNDGRAM based on the earlier marks INSTAGRAM and GRAM
  • Richards J stressed that appellate courts have been repeatedly warned “that they should not lightly interfere with factual findings of a first-instance tribunal
  • The “plainly wrong” bar was not met and the appeal failed

A trial judge’s decision must be “plainly wrong” for the appeal court to interfere or overturn it. This is a high bar for an appealing party to meet and it also begs the question: what does “plainly wrong” look like? Appealing a trial judge’s decision is an uphill battle from the outset; Lady Hale, in AH (Sudan) v Secretary of State for the Home Department ([2007] UKHL 49, Paragraph 30), noted that the court should approach the appeal on the basis that it is probable that an expert tribunal, charged with applying the law in their specialist field, has got it right.

The case
The expert tribunal in this case was the UK Intellectual Property Office (UKIPO), at a hearing between the parties, Instagram LLC and Meta 404 Ltd, in trademark opposition proceedings.

Instagram had opposed the registration of the mark SOUNDGRAM under Sections 5(2)(b) and 5(3) of the Trademarks Act 1994 based on its earlier registered marks for INSTAGRAM and GRAM. The hearing officer found that, in respect of Section 5(2)(b),there was low similarity between the marks, despite the common suffix ‘gram’, and that ‘gram’ had only a low level of distinctiveness in respect of the goods and services for which it was fi led. In respect of Section 5(3), the hearing officer found no link or bringing to mind between INSTAGRAM and SOUNDGRAM. Instagram’s opposition therefore failed on both counts.

Instagram was not happy and appealed the decision at the High Court, claiming, among other things, that the hearing officer had erred in his assessment of the distinctiveness of the GRAM mark and in his assessment of the similarity of GRAM and INSTAGRAM with SOUNDGRAM.

The challenges of an appeal
Richards J noted that appellate courts had been repeatedly warned, even recently, “that they should not lightly interfere with factual findings of a first-instance tribunal”, and referred to Volpi v Volpi ([2022]), which clarified that an appellate court would not set aside a trial judge’s conclusions on primary facts, unless the trial judge was “plainly wrong”. It did not matter whether a different decision could have been reached, what was important was whether the decision was one “no reasonable judge could have reached”. Further, a decision could be set aside by the appellate court if the trial judge had failed to give a balanced consideration of evidence “only if the judge’s conclusion was rationally insupportable”. Richards J remarked that these principles applied not just to the hearing officer’s findings of primary fact, but also to the evaluative conclusions, drawn from primary facts, such as the degree of similarity between the marks. He also noted that, in the present case, the hearing officer’s findings were largely evaluative and drawn from uncontroversial matters of primary fact.

The appeal
Instagram submitted that, in relation to the Section 5(2)(b) claim, the hearing officer’s decision was “perverse”, being one that no reasonable hearing officer could have made. Richards J disagreed, finding that the hearing officer did consider the evidence (on the alleged distinctiveness of GRAM in relation to Instagram’s goods and services) and was reasonably entitled to draw his conclusion on the lack of distinctiveness of GRAM.

In respect of the arguments on similarity, Richards J concluded that the hearing officer did set out an overall evaluative conclusion, which took into account all the evidence presented to him. Whilst Richard J noted that another hearing officer might have stopped in his analysis of the word ‘gram’ at an earlier point, this hearing officer did not – but that was reasonable. The result was that the “plainly wrong” bar was not met and the appeal failed (Instagram LLC v Meta 404 Ltd [2023] EWHC 436(Ch)).

This judgment has drawn attention to the role the High Court takes when considering appeals from the UKIPO. Richard J has reminded appellants that the appeal court will not interfere with the decisions of hearing officers unless the decision reached was so beyond reasonableness that it was “plainly wrong”. Different hearing officers will inevitably draw different conclusions, but this does not give rise to unreasonableness. Hearing officers may and do draw upon their own expertise and opinion.

Whilst it will always be appealing to challenge a decision which has not fallen in your client’s favour, it may be wise to manage the client’s expectations of what can be achieved on appeal.


This article first appeared in WTR Daily, part of World Trademark Review, in April 2023. For further information, please go to www.worldtrademarkreview.com.

Latest News & Events See All

Share by: