Facts

Match Group LLC operates several online dating sites worldwide, including in the UK, and owns several registered trade marks in word and device form as follows:

• a European Trade Mark (EUTM) for MATCH.COM, filed in April 1996 in Class 42 for “… online dating and introduction services”;
• a EUTM for MATCH.COM, filed in January 2017 in Class 9 for “… a mobile application for internet-based dating and introduction”, Class 42 for “a social media website”, and Class 45 for “… dating services” and “internet based social networking”; and
• a UK device trade mark for , filed in March 2015 in Class 45 for “date-arranging services”, “dating agency services, matchmaking services” (the Marks).

In around April 2011, Shahzad Younas set up a business under the name Muzmatch with the aim of providing online or internet-based matchmaking services to the Muslim community. In 2014, Mr Younas founded Muzmatch Ltd to take over the Muzmatch business.

Match first became aware of Muzmatch in 2016. The parties entered into without prejudice discussions over the use of “muzmatch”, but the discussions broke down.

In 2018, Muzmatch applied to register “muzmatch” as both a EUTM and a UK trade mark. Match successfully opposed the applications.

In 2020, Match issued proceedings against Muzmatch and Mr Younas, claiming infringement of each of Match’s trade marks under ss 10(2)(b) and 10(3) of the Trade Marks Act 1994 in relation to the UK marks and Articles 9(2)(b) and (c) under the EU Trade Mark Regulation (207/2009/EC) in respect of the EUTMs. Match also claimed passing off. Match said that Muzmatch’s use of the word “match” as part of its name and its use of the words “match” as part of a search engine optimisation (SEO) strategy to increase the number of visitors to Muzmatch’s website infringed its rights.

Muzmatch denied infringement, arguing that, used by itself, the word “match” was not distinctive and was an ordinary descriptive word when used in relation to dating services.

The evidence

Match started providing dating services in the UK in 2001. Since then, it has used various signs and logos, all involving emphasis on the word “match”, whether in word or device form, for example as follows:

The evidence showed a successful advertising and marketing campaign by Match since 2009, which had resulted in high brand awareness survey figures. By 2011, it had 129,00 subscribers and sales of more than €29 million. According to YouGov research from 2011, Match was the dating brand that resulted in the most relationships and marriages.

As for Muzmatch, the evidence was that the name was chosen to link matchmaking services with the letters “muz” to show that the services were directed at Muslims.

Muzmatch’s website was launched in 2011. Since then, it used the “muzmatch” sign in various forms, including as follows:

By September 2021, Muzmatch had 666,069 signups and an average of 71 million swipes a month. There was also evidence of advertising on the London Underground and on buses in London and Manchester, as well as on TV and on Muzmatch’s YouTube page.

The SEO strategy that Mr Younas put in place to promote his business consisted of a list of 5000 keywords that related to Muslim marriage or Muslim matchmaking. Although “match” and “match.com” were not included in the list, there were 132 keywords containing the word “match”, e.g., “match-muslim” and “UK-Muslim-Match”.

The evidence showed that there were a substantial number of searches on keywords that included the word “match”, e.g., “muzmatch.com/”, “muzmatch.com/single-muslim-marriage-uk-muslim-match”, and that a reasonably substantial number of users clicked through from the link to the landing pages on Muzmatch’s website.

Decision

Section 10(2)(b)

There was no dispute that the Signs were used within the relevant territory, in the course of trade and without Match’s consent.

Mr Nicholas Caddick QC (sitting as a Deputy High Court Judge) found that Muzmatch’s services were either identical or highly similar to those for which the Marks were registered. He rejected Muzmatch’s argument that there was a difference between targeting the Muslim community and the general public.

Mr Caddick QC found that there was a medium level of similarity between the Marks and the Signs, albeit a similarity that was slightly greater in some cases than in others. Notwithstanding the addition of “muz” to the Signs and the addition of “muslim”, “UK” or “United Kingdom” to the keywords, the “match” element remained a clear and important area of visual similarity between the Signs and the Marks.

As for likelihood of confusion, in the light of Muzmatch’s argument that “match” was descriptive rather than distinctive, Mr Caddick QC referred to Planetart LLC v Photobox Ltd, which showed that where a claimant’s mark and a defendant’s sign share a common descriptive element it is more difficult to find a likelihood of confusion, but it is not impossible. Further, a finding of a likelihood of confusion can be appropriate where the average consumer recognises that the common element, whilst capable of being used descriptively, is in fact being used distinctively as a badge of origin.

Caddick concluded that there was a likelihood of confusion because:

• by 2011, the 1996 Mark had acquired a very substantial degree of distinctiveness and reputation as a brand and badge of origin of Match’s online dating services, as shown by the branding awareness and advertising evidence; this distinctiveness also attached to the 2017 Mark from its filing date;
• the average consumer would see the word “match” as the dominant element in the Marks and would not be particularly influenced by either the .COM element or the heart component on the device Mark; the evidence showed that by 2011, many people were referring to Match’s business simply as “Match”;
• by 2011, the average consumer was aware that the word “match” in the context of online dating services could be used, and was used, both descriptively and distinctively, and could distinguish between such uses;
• use of the word “match” in a distinctive sense was not widespread in 2011, except by Match;
• by early 2011, the average consumer associated distinctive uses of the word “match” in the context of online dating services with the services of Match;
• Muzmatch also used the word “match” in a distinctive rather than descriptive way, as part of its business name; there was no evidence of Muzmatch using the word descriptively;
• given the dominance of the word “match” in the Signs, the addition of “muz” and other words in the SEO keywords, did not significantly reduce the likelihood of confusion with the Marks;
• in the case of the SEO keywords, the use of the word “match” was less obviously distinctive, and some users might have used it descriptively, e.g., a search for “UK Muslim match” might have been intended to find a match who was a Muslim in the UK; however, the same search might also have been made by using “match” distinctively, i.e., to look for a Muslim partner specifically on Match’s website;
• although there was no evidence of what the search results for “match” as part of a keyword would have presented, it was likely that the results would have shown a link to Muzmatch’s website, therefore showing the Signs; if so, the average consumer would not have been able to ascertain that that link had not originated from Match (or an undertaking economically linked to Match) but from a third party;
• a user who clicked on the link from the search results page would have been taken to the relevant landing page on Muzmatch’s website, which featured distinctive rather than descriptive use of “match”; this was likely to lead such user to believe that the landing page was connected with Match; and
• given the relatively substantial numbers of users who carried out searches using keywords from Muzmatch’s SEO list and who landed on Muzmatch’s website, such users were likely to have been confused.

Accordingly, infringement under s 10(2)(b) was established.

Section 10(3)

Mr Caddick QC found that, by 2011, the 1996 Mark had a very significant reputation in that it was known by a very substantial part of the public concerned with such services and was the dominant force in the market. Moreover, the evidence showed that Match had Muslim customers, and that Mr Younas himself was aware of the Match brand. Therefore, that reputation extended to people within the Muslim community. This reputation would also have attached to the later 2017 Mark once registered.

As for the 2015 device Mark, Mr Caddick QC said that by 2011 the average consumer was aware that where the word “match” was used in a distinctive sense, it designated Match’s services. Given Match’s dominant position in the market, the device Mark would rapidly have acquired its own distinctiveness and reputation, including in the Muslim community.

For the same reasons that there was a likelihood of confusion, Mr Caddick QC found that there was a link between the Signs and the Marks in the mind of the average consumer.

Mr Caddick QC was also satisfied that the Signs took unfair advantage of the distinctive character or repute of the Marks. Match had invested very substantial sums in order to build its reputation. By using the Signs in relation to identical/highly similar services in a way that created a link to the Marks, Muzmatch had taken some of the benefit of that reputation and investment without paying for it.

The case was less clear in respect of the device Mark, which had no enhanced distinctiveness as at its filing date in March 2015. Nevertheless, by reason of Match’s activities, the average consumer would have associated the word “match”, which was the dominant element of the Mark, with Match’s business. Therefore, use of the Signs also took unfair advantage of the distinctive character or repute of the device Mark.

However, Mr Caddick QC found that there was no detriment to the distinctive character of the Marks, as there was no evidence that use of the Signs had led (or was likely to lead) to any change in the economic behaviour of the average consumer.

As for undue cause, Mr Caddick QC said that given his findings on unfair advantage and given that Match was not seeking to prevent descriptive uses of the word “match”, Muzmatch had not established that its conduct was with due cause.

Mr Caddick QC rejected Muzmatch’s defence of honest concurrent use. Muzmatch said that because Match and Muzmatch had coexisted for over ten years in the same field, the public had been educated that the marks did not indicate the services of just one of them.

Mr Caddick QC noted that in the authorities relied on by Muzmatch, e.g., Case C-482/09 Budweiser, the use relied on as being honest concurrent use was not infringing use when it started; the claimant’s mark sued on was registered after the honest concurrent user had started. In contrast, in this case, Muzmatch’s use started as infringing use of the already registered Marks; that use had interfered with the essential function of the Marks, had given rise to a likelihood of confusion and/or had taken unfair advantage of their reputation. In the absence of estoppel or statutory acquiescence, it was difficult to see how use that started as infringing use could be turned into honest use by the fact that it had continued. Accordingly infringement under s 10(3) was established.

Passing off

For the same reasons as set out above in relation to reputation, Mr Caddick QC found that by 2011, the Marks had acquired substantial goodwill in relation to online dating services. Match had also acquired significant goodwill in the word “match” when used distinctively in relation to online dating services. This goodwill extended into the Muslim community.

As for misrepresentation, for the same reasons as in relation to likelihood of confusion, Mr Caddick QC found that use of the Signs amounted to misrepresentations as it would have led some consumers to assume that the goods and services offered by Muzmatch were somehow connected with or derived from Match. This would have led to damage to Match’s goodwill. Accordingly, the passing off claim also succeeded.

In a post script, Mr Caddick QC noted that the case was not the simple or straightforward case that the parties suggested.  He did not think it was suitable for a two day trial in the IPEC.  In particular, the limited time counsel had for oral submissions meant that he had been very reliant on their written submissions and did not have the benefit of full oral submissions on various matters of factual or legal difficulty.

In his view, if the parties wished the case to be heard as a two day trial in the IPEC they should have attempted to narrow down the issues before the CMC, and if that was not possible, or the scale of the issues only became apparent later, they should have sought to have the case transferred to the main High Court to allow it to have a longer trial.

(Match Group LLC v Muzmatch Ltd [2022] EWHC 941 (IPEC) (20 April 2022) — to read the judgment in full, click here).