Key Facts
- •Trade mark dispute concerning the use of "MATCH" and "MUZMATCH" for online dating services.
- •Claimants (Match Group) own EU and UK trade marks for MATCH.
- •Defendants (Muzmatch) provide online dating services to Muslims, using "MUZMATCH".
- •Defendants used "match" in SEO keywords.
- •Defendants admitted infringement of Tinder Marks (a separate claim).
- •Lower court found for Claimants on trade mark infringement and passing off.
- •Defendants appealed.
- •Muzmatch's services were admitted to be identical to those for which the Trade Marks were registered.
- •There was a dispute as to the extent of similarities between the Trade Marks and the signs complained of. The judge found a medium level of similarity.
- •The Claimants' services were not targeted at any particular group of users, but a reasonable number of users identified as Muslims.
- •There was very little evidence of actual confusion despite over 10 years of parallel trade.
- •The Defendants argued for a defence of honest concurrent use.
Legal Principles
Likelihood of confusion in trade mark infringement must be appreciated globally, considering all relevant factors from the perspective of the average consumer.
Sazerac Brands LLC v Liverpool Gin Distillery Ltd [2021] EWCA Civ 1207
In trade mark infringement, six conditions must be satisfied: use of a sign in the course of trade without consent; similarity to the trade mark; relation to similar goods or services; and likelihood of confusion.
Trade Marks Act 1994, section 10(2); EUTM Regulation, Article 9(2)(b); Directive 2015/2436, Article 10(2)(b)
For trade mark infringement under Article 9(2)(c) of the EUTM Regulation, the trade mark must have a reputation, the sign must create a link in the consumer's mind, and there must be one of three types of injury (detriment to distinctive character or repute, or unfair advantage).
Trade Marks Act 1994, section 10(3); EUTM Regulation, Article 9(2)(c); Directive 2015/2436, Article 10(2)(c)
Honest concurrent use is not a separate defence to trade mark infringement but a factor in the infringement analysis. The burden shifts to the defendant to show no adverse effect on the trade mark's functions.
W3 Ltd v easyGroup Ltd [2018] EWHC 7 (Ch); Budweiser; IPC v Media 10
Outcomes
Appeal dismissed.
The judge correctly found a likelihood of indirect confusion, despite limited evidence of actual confusion. The lack of evidence of actual confusion was explained by the nature of online services. The defence of honest concurrent use failed because the court found no evidence that most consumers distinguished Muzmatch from Match.