The Court of Appeal has recently confirmed that an online dating service trading as MUZMATCH and targeting Islamic customers has infringed the trade marks of the Match Group. The judgment provides useful insight into how infringement can arise when there is a likelihood of indirect confusion but little evidence of actual confusion. Further, it confirms how honest concurrent use cannot be used as a standalone defence to trade mark infringement.

Match Group

Match Group have been providing online introduction and dating services to consumers of all religions in the USA via the www.match.com website since 1995. These services were launched in the UK in 2001 and Match Group owned a number of social media pages for match.com from 2009 onwards, including a Twitter handle, YouTube channel and Facebook page. Match Group registered the logo "match" with a small love heart as a figurative UK trade mark in 2015 in respect of services in class 45 including “dating agency services; provision of dating agency services via the Internet”.

It also owned two EU trade marks for the word MATCH.COM:

• Class 42 for “information and consultancy services in the nature of on-line dating and introduction services” in class 42 (registered in 1996); and
• Class 9 for “downloadable software in the nature of a mobile application for internet-based dating and introduction” and class 42 for “dating services” (registered in 2017)

Muzmatch

Muzmatch, led by its director Mr Younas, provides online dating services to Islamic consumers. Muzmatch started in 2011, launching an app in 2015 (subscription added in 2017). The app featured a logo, which had the word "muzmatch.com" in a lower case font with the addition of a small heart device over the dot. This logo was first used before Match Group adopted the love heart device in connection with its logo "match". In April 2011, Muzmatch dropped the ".com" from its logo.

In 2016, as result of a complaint from Match Group, Muzmatch adopted a logo featuring the word "MUZMATCH" in an upper case font preceded by a butterfly device.

In January 2020, they adopted a logo featuring the word "muzmatch" in a lower case font with a different butterfly device above it.

In 2022, Match Group brought a claim for passing off and that its UK figurative mark, and EU word marks for MATCH.COM were infringed by Muzmatch's use of the MUZMATCH name, the various logos incorporating the word MUZMATCH and certain phrases that included the word "match".

The case was originally heard in the Intellectual Property Enterprise Court in April 2022 before Deputy High Court Judge Nicholas Caddick KC. He held that the trade marks were infringed and that Muzmatch had committed passing off. Muzmatch appealed.

Court of Appeal

The Court of Appeal judgment addressed Muzmatch's arguments of honest concurrent use and trade mark infringement through a likelihood of indirect confusion. Lord Justice Arnold (with whom Lord Justice Nugee and the Lord Chief Justice agreed) allowed the appeal on certain grounds, but ultimately affirmed the IPEC outcome.

Likelihood of indirect confusion

The Court of Appeal supported Match Group's argument that there was a likelihood of indirect confusion, rather than direct confusion, for the average consumer. As described in the judgment, indirect confusion is "where the consumers do not mistake the sign for the trade mark, but believe that goods or services denoted by the sign come from the same undertaking as goods or services denoted by the trade mark". Muzmatch argued that the judge had not given enough weight to the lack of evidence of actual confusion, despite the fact that the parties had traded side-by-side for over 10 years. The first instance judge had ruled that any consumer confusion was unlikely to have been detected. Whilst he did not specifically highlight that this was a case of indirect confusion, he decided that "the average consumer would have thought that Muzmatch was a sub-brand of [Match.com]". The Court of Appeal upheld the judge's decision and argued that "indirect confusion is inherently less likely to come to light than direct confusion". Further, the Court of Appeal affirmed the first instance judgment that there did not need to be evidence of actual confusion in order to find infringement and pointed to the difficulty of any customer confusion coming to light in relation to dating services.

Honest concurrent use

Of more interest (indeed, Arnold LJ described it as the "most important part of the appeal") was honest concurrent use. Whilst Muzmatch argued that honest concurrent use was a free-standing defence, the Court of Appeal agreed with the trial judge in the first instance that honest concurrent use is not a separate defence but "a factor in the infringement analysis". Arnold LJ reached this conclusion because there is no statutory basis for it in the EUTM Regulation (2017/1001/EU), Trade Marks Directive (2015/2436) or the UK Trade Marks Act 1994.

Arnold LJ held that honest concurrent use could be relied upon with regard to:

• section 10(1) TMA 1994, as "sufficiently rebutting the presumption that there is a likelihood of confusion";
• section 10(2) TMA 1994, "when assessing whether [there] is a sufficient likelihood of confusion in the first place having regard to the difference in the guarantee of origin provided by the trade mark and the sign", and
• section 10(3) TMA 1994, "in assessing the existence of one of the specific kinds of injury having regard to [the difference in the guarantee of origin provided by the trade mark and the sign]". Namely that honest concurrent use forms part of the assessment as to whether there is any tarnishment or dilution of the reputation of the mark.

Honest concurrent use is therefore part of the infringement analysis: once a claimant has suggested that there has been a prima facie case of infringement, the burden of proof is on the defendant to prove that there is no adverse effect on any of the functions of the claimants' trade mark and, separately, that the relevant class of consumers has been educated to understand that the sign is unrelated to the other party's mark. The Court of Appeal held that most of the relevant class of consumers would not have been educated to understand that Muzmatch was unrelated to MATCH. Further, the Court of Appeal held that there had been an adverse effect on Match Group's marks, due to the likelihood of confusion between the two brands. Arnold LJ affirmed the trial judge's assessment that it would have to be a "very unusual case" for a defendant to argue that "continuing to infringe gives rise to a defence to an infringement claim". He elaborated that a "very unusual case" could, for example, be a situation where there was no action by the trade mark proprietor, the infringing mark developed goodwill through parallel trade and consumers recognised that the signs had different origins. This was not found to be the case here as Match Group had repeatedly objected to the Muzmatch's infringement and consumers did not recognise the signs as having different origins.

Divergence of UK and EU law following Brexit?

Finally, this case was brought pre-31 December 2020 and therefore concerned pre-Brexit infringements. The Court noted that a standalone defence of honest concurrent use was not permitted for pre-Brexit acts under EU law. However, Arnold LJ specifically left open the question of whether, in the future, an English court might be able to read such a defence into the 1994 Act as a matter of domestic law. There is therefore a possibility for this to become an area of potential divergence between EU and UK law.

Comment

Overall, this case illustrates how difficult it is to rely on the defence of honest concurrent use, particularly when the use was infringing at the outset. To avoid complicated disputes like this one, businesses should conduct comprehensive clearance searches before starting to use any new brand. Nevertheless, the case should remind trade mark owners to take swift action once they become aware of possible trade mark infringements. The judgment specifically concludes that “trade mark cases always get worse with neglect”.

Those businesses defending trade mark infringement actions should note the Court’s view that indirect confusion is less likely to come to light than direct confusion. As in this case, there may still be indirect confusion if consumers believe there is a connection between the two businesses, despite a lack of evidence of actual confusion between the registered mark and the sign.

Finally, it is interesting that the court gave the term "match" such a broad scope of protection. It is arguable that the term is descriptive of Match Group's online dating services, its "matchmaking" services, and does not act as a distinctive brand denoting origin.