The Court of Appeal has dismissed an appeal by the provider of the “Muzmatch” online introduction service against the High Court’s finding of infringement and passing off.

The Claimants were the providers of the “Match” online dating service which had launched in 2001 and which by 2010 had achieved a high level of brand awareness. The Defendants were the providers of the “Muzmatch” online dating service aimed at Muslims in the UK which was set up in 2011. Match learned of Muzmatch’s activities in 2016 and asserted trade mark infringement in correspondence, following which there were inconclusive co-existence and acquisition discussions. Match was successful in two oppositions against Muzmatch marks, then brought proceedings in July 2020.

First instance decision

The High Court held that the Defendants had infringed the Claimants’ trade marks for “MATCH.COM” and “match” with a small heart device, and had committed passing off.

The judge (Nicholas Caddick KC) held that there was a likelihood of confusion under s.10(2)(b) TMA 1994. In response to the Defendants’ arguments that the common “match” element was descriptive rather than distinctive, the judge found that in this case “match” had acquired a very substantial degree of distinctiveness and reputation as a brand and the average consumer would have been perfectly able to distinguish between descriptive uses of “match” and distinctive uses. The judge dismissed the Defendants’ argument that if there was a likelihood of confusion then there would by now have been come credible evidence of actual confusion, stating that such evidence did not preclude his finding, and that in any case the manner in which the services were provided (via websites and apps) made it hard to see how such evidence could come to light.

The Claimants were also successful in establishing infringement under s.10(3) TMA on the basis of unfair advantage, including as a result of the Defendants using them as search keywords. But their case on detriment to distinctive character failed because there was no evidence to establish that use of the “Muzmatch” signs had or was likely to lead to any chance in the economic behaviour of the average consumer.

The Claimants’ passing off claim was also successful.

The judge also found that honest concurrent use was not available since Muzmatch’s use started as infringing use of Match’s prior registered trade marks.

Court of Appeal

The Defendants appealed on several grounds, all of which were rejected. The two grounds of particular note are as follows:

Trade mark infringement

Regarding trade mark infringement, the Defendants argued that the court failed to take into account the absence of evidence of actual confusion despite the parties having traded side-by-side for over 10 years.  Lord Justice Arnold, giving the leading judgment, disagreed finding that the first instance judge was alive to the point that there was very little, if any, evidence of actual confusion and that his decision to give this little weight was a matter for him, being a question of assessment of the evidence, which fell squarely within his remit.

Honest concurrent use

Of most importance was the Defendants’ appeal on the matter of honest concurrent use, which the Defendants argued was a defence to trade mark infringement and passing off.

Honest concurrent use as a separate defence?

In addition to the two specific grounds discussed below, the Court of Appeal considered a third anterior question of law: Was the first instance judge right to find that honest concurrent use was not a separate defence but rather a factor to be considered in the infringement analysis?

The Court of Appeal held that the first instance judge was correct to so find, because neither the EUTM Regulation nor the relevant Directive nor the Trade Marks Act 1994 (TMA) provide for a defence to infringement on the grounds on honest concurrent use. Rather, for each ground of infringement under the relevant UK and EU legislation, honest concurrent use would be taken into consideration as a factor in assessing infringement. For example, for infringement under 10(2) TMA, honest concurrent use could be relied on by the defendant to rebut the presumption that there is a likelihood of confusion; once the claimant has established a prima facie case of infringement, the burden shifts to the defendant to show that there is nevertheless no adverse affect on the functions of the trade mark.

Date of assessment of honest concurrent use?

Having addressed this question, the Court of Appeal went onto consider the two specific errors of law raised by the Defendants. They asserted that the first instance judge was wrong to find that the honest concurrent use defence was only available (i) where the use of the sign complained of was non-infringing use when it started; and (ii) if the use started before the trade mark was registered.

Regarding the date of assessment, Lord Justice Arnold held that the general rule is that the relevant date is when use of the sign complained of started – but this is not a “once-and-for-all assessment”. In theory, a use which was initially infringing could eventually cease to be infringing (as ‘honest concurrent use’). This could occur if the mark and sign came to be understood by consumers as denoting different trade origins as a result of (i) substantial parallel trade for a long period of time; and (ii) the trade mark owner taking no action. Contrary to the Defendants’ submission, the first instance judge had not in fact ruled this out, although had stated it would be “a very unusual case”. The Court of Appeal also held that it was not necessary for the use complained of to have started before the trade mark was registered (and in fact the first instance judge had not held that it was).

Comment

The Court of Appeal decision gives a helpful overview of the notoriously complex and piecemeal law relating to honest concurrent use. The case shows how difficult it can be to rely on honest concurrent use, even in circumstances where there is very little evidence of actual confusion and where there appears to have been a substantial period of parallel trade.  Those choosing a brand should invest in comprehensive trade mark searches although, as held by Lord Justice Arnold in his closing remarks, a mere failure to do so does not negate honest concurrent use. For trade mark owners, the case reinforces the importance of taking swift action against potential infringers to avoid a case billowing to a size that ends up bigger than it need be. As Lord Justice Arnold quoted (from Jacob LJ in Phones 4U) at the end of the judgment:

“Like gardens trade mark cases always get worse with neglect – even if rights are not actually lost, delay is apt to turn what would be over in a few weeks by a quick application into a mini State Trial”.