MATCH GROUP, LLC v MUZMATCH LIMITED

For trade mark infringement, a common descriptive element does not automatically prevent confusion. The court must assess the marks globally, through the eyes of the average consumer, taking account of distinctiveness, reputation and the context of use. A word capable of descriptive use may nevertheless function distinctively as a badge of origin.

Under section 10(3) of the Trade Marks Act 1994, unfair advantage does not require confusion, detriment or an intention to exploit the mark. Objective benefit from the reputation of a mark may suffice. Detriment to distinctive character requires evidence of actual injury or a likely change in the economic behaviour of the average consumer.

Honest concurrent use is not ordinarily available where the defendant’s use began as infringing use of an earlier registered mark.

Match Group, LLC, Meetic SAS and Match.com International Limited sued Muzmatch Limited and Shahzad Younas for infringement of registered trade marks and passing off. The claim concerned the use of “muzmatch” signs and SEO keywords containing “match” in connection with online Muslim matchmaking services.

The defendants admitted liability concerning use of “tinder” and gave undertakings. They denied liability concerning “match”, arguing that it was descriptive, that Muslim dating was a distinct market, and that their use was honest concurrent use. The central issues were likelihood of confusion under section 10(2), unfair advantage and detriment under section 10(3), due cause, honest concurrent use and passing off.

1. Trade mark infringement under section 10(2). The court applied the six conditions identified in Comic Enterprises and the global assessment required by Specsavers. The relevant average consumer was a reasonably well-informed, circumspect and observant member of the general public seeking an online dating or introduction service. The level of attention was likely to be relatively high because users supplied sensitive personal information and needed to trust the platform.
2. The common word “match” created visual, aural and conceptual similarity. The additions “muz”, “Muslim”, “UK” and “United Kingdom”, together with the different fonts and devices, did not remove that similarity. By the relevant dates, Match had acquired substantial distinctiveness and reputation, and consumers would understand “match” to be used distinctively in the Match marks. The use of “match” in the Muzmatch signs was also distinctive rather than merely descriptive.
3. The SEO use required particular analysis. Use of a keyword alone was not necessarily actionable. The question was whether the search result or resulting landing page enabled the average user to ascertain, without difficulty, whether the service originated from Match or an economically connected undertaking. The evidence showed a likelihood of confusion. Section 10(2) infringement was established.
4. Section 10(3). The Match.com marks had a substantial reputation, including among Muslim consumers. The signs created a link with those marks. Muzmatch obtained an objective benefit from Match’s reputation and marketing investment, whether or not it subjectively intended that result. Unfair advantage was therefore established. The claim based on detriment to distinctive character failed because no actual injury or likely change in consumer economic behaviour was proved.
5. Muzmatch failed to establish due cause. The considerations relevant to unfair advantage and due cause substantially overlapped, and the use of “match” was not shown to be justified as descriptive use. Honest concurrent use did not provide a defence because the use had begun as infringing use and continued after Muzmatch knew that Match objected.
6. Passing off. Match possessed goodwill in “Match” when used distinctively for online dating services. The Muzmatch signs constituted misrepresentations likely to lead consumers to believe that Muzmatch’s services were connected with Match, causing damage to that goodwill.
7. The claim succeeded. The court also observed that the case was unsuitable for a two-day IPEC trial given the volume and complexity of the evidence and submissions.