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25th Aug 2022

[2022] EWHC 941 (IPEC), Match Group LLC and others v Muzmatch Ltd and others: Emilia Petrossian explains how one dating site mark met its match.

[2022] EWHC 941 (IPEC), Match Group LLC and others v Muzmatch Ltd and others, High Court, 20th April 2022: Emilia Petrossian explains how one dating site mark met its match

Key points

The descriptiveness of an earlier mark with reputation does not automatically mean that a third party can use that mark
Keywords as part of an online searching strategy can infringe a registered owner’s trade mark rights

Match Group, LLC, Meetic SAS and Match.com International Ltd (together, Match) have been successful in their trade mark infringement and passing off claim against Muzmatch Ltd and Shahzad Younas (together, Muzmatch) and the use of the word “match” on the dating service Muzmatch.

Match, which includes the brands match.com and Tinder, started its Match dating service in 1995 in the US via www.match.com. Match expanded into the UK in 1996, when it registered its first UK and EU trade marks for MATCH.COM. Match uses or has used a variety of other logos.

Muzmatch launched in 2011 as a dating website for Muslims, with its app following in 2015. Its strategy was to use keywords that included the words “match” and “tinder”.

Muzmatch uses or has used a variety of logos since its launch.

In 2016, Match notified Muzmatch that it considered its activities to infringe the Match.com mark and associated device marks, also alleging passing off.

The parties entered into settlement discussions during which Match offered to buy Muzmatch under four separate offers, all of which were rejected.

The negotiations ended in 2019 and Match brought proceedings against Muzmatch for infringement under s10(2) and s10(3) of the Trade Marks Act 1994 (TMA) and for passing off in 2020.

Consumer considerations

Match claimed that Muzmatch used signs containing “match”, which infringed its Match marks.

The average consumer for the Match marks is the general public. However, Muzmatch is a dating service aimed at Muslims and asks users questions about whether they are “very practising”, “moderately practising”, “practising” or “non‑practising” Muslims and whether they “never”, “sometimes”, “usually” or “always” pray.

Muzmatch claimed that “practising Muslims are not the ‘typical user’ of dating services”.

It wasn’t clear to the Court whether this was a suggestion that the average consumer of

Match would not be a practising Muslim or whether it was for the Court to bear in mind when assessing likelihood of confusion.

Nevertheless, the Court held that there is no single category in which to put practising Muslims.

Further, the Court held that the common ground is an average consumer who is reasonably well informed, reasonably circumspect and observant, who rarely has the chance to make a direct comparison between the marks and relies on imperfect recollection.

The Court held that there was no question that the Muzmatch signs at issue were clearly used within the relevant territory, in the course of trade and without the consent of Match.

Identicality and similarity

Muzmatch argued that there is no similarity between the marks. Muzmatch’s marks included extra elements such as “muz”, “Muslim”, “UK” or “United Kingdom” and Match’s marks contained extra elements such as “.com”, a heart device and a butterfly device.

The Court disagreed with this argument and held that the marks were similar to a medium degree despite the addition of extra words because all marks contained the clear common element “match”.

Further, the Court held that the inclusion of “.com” did not prevent clear visual and aural similarity arising from the common use of the word “match”.

The Court also held that changes in the stylised font or inclusion of a device in the mark did not make the marks dissimilar.

As marks were not heavily stylised, it did not detract from the similarity of the common word used and inclusion of a device element had no effect on the marks when they are being referred to aurally.

A medium level of similarity was found between the marks.

Muzmatch argued that there was only a low degree of similarity between its services and the class 42 services of the Match marks.

The Court stated that even though class 42 services for “information and consultancy services in the nature and field of on‑line dating and introduction services” were not provided by Muzmatch, these services were clearly complementary to online dating services and were therefore highly similar.

Likelihood of confusion

Match argued that Muzmatch’s signs and use of “match” as a keyword would give rise to confusion, with the general public led to believe that Muzmatch’s services were those of Match.

Muzmatch argued that the only similarity between the marks was “match”, which is non‑distinctive and descriptive, and therefore there was no likelihood of confusion.

Further, if there were actual confusion, there would be credible evidence of it by now, which had not been demonstrated.

The Court held, on the basis of the evidence provided by Match, that the dominant element in the Match marks was the word “match”, which is associated with the services of Match.

Inclusion of additional elements in the Muzmatch signs would not reduce the likelihood of confusion with the Match marks.

Therefore, when considering the evidence and the dominant presence of Match in the market since 2011, the Court found that the Muzmatch signs would lead to consumers believing that Muzmatch was connected with and viewed as a sub‑brand of Match that targeted Muslim consumers.

On the point of evidence of actual confusion, the Court relied on the case of Jack Wills v House of Fraser [2014] ETMR 28 at [99]:

“… absence of evidence of actual confusion is not necessarily fatal to a claim under art.5(1)(b).

The longer the use complained of has gone on in parallel with use of the trade mark without such evidence emerging, however, the more significant it is. Other relevant factors are the scale of the use complained of and the likelihood of actual confusion being detected.”

The Court therefore concluded that, although there was an absence of evidence of actual confusion, a likelihood of confusion was present in this case. Accordingly, the claim under s10(2) was successful.

Infringement

The Court assessed the claim under s10(3) as if the Muzmatch signs did not give rise to likelihood of confusion within the meaning of s10(2).

The Court held that there was no issue with the conditions that the sign must be used by a third party in the relevant territory, in the course of trade, without the consent of the proprietor and be in relation to goods or services of the registered mark.

Remaining issues

The Court held that the word “match” was distinctive in the sense that it was associated with Match and its services. Match had a dominant position in the market which was reflected in the levels of public awareness of its services, advertising and social media.

Also, Match’s device marks have an established reputation of their own, being used from 2015. The assessment of the similarity of the marks had already been dealt with as detailed above.

Given that Match acquired a reputation in the market since 2011 and there was held to be a medium level of similarity between the marks and identity of the goods/services at issue, the Court held that consumers would find a link between match.com and the Muzmatch signs.

In respect of the Match device marks, acquired distinctiveness was not established until 2015, when use started.

However, the Court still held that the average consumer would have made a link with the Muzmatch signs. Further, the Court also held that consumers would find a link between Muzmatch’s keywords and the Match marks.

The Court held that Muzmatch had taken unfair advantage of the distinctive character and/or reputation of the Match marks, which was supported by the style and colours used by Muzmatch in its branding. However, the Court did not find any change in economic behaviours.

Finally, Muzmatch did not establish its conduct was with due cause.

Muzmatch claimed honest concurrent use as a defence, arguing that during settlement discussions with Match its concerns were with the format and style of the mark and not use of the name Muzmatch, and relying on estoppel Muzmatch claimed it acted honestly.

It was held that: “Muzmatch’s mistaken views as to the legal basis of its actions cannot transform what were infringing acts into non‑infringing acts”. No honest concurrent use was accepted.

Passing off

In dealing with the passing off action, the Court confirmed that Match had acquired goodwill not only in its Match.com mark but also in the word “Match” in all its marks.

Although the services were not specifically targeted at people in the Muslim community, its goodwill would have extended into that community.

Further, the Muzmatch signs would lead consumers to believe that it was connected to Match, giving rise to a likelihood of confusion causing damage to Match’s goodwill. Therefore, the claim for passing off also succeeded.

Emilia Petrossian is a Chartered Trade Mark Attorney at Wedlake Bell LLP.

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