Match Group, LLC & Ors. v Muzmatch Limited & Anor.

Honest concurrent use is not a free-standing defence to trade mark infringement. It is relevant when assessing whether the statutory conditions for infringement are met, including likelihood of confusion or the requisite injury to a trade mark with a reputation.

Once a proprietor establishes a prima facie case, the alleged infringer bears the burden of showing that long, honest concurrent use has so changed consumer understanding that its sign does not adversely affect any trade mark function. Use which was initially infringing may in theory cease to infringe after substantial parallel trading and consumer education. That result is exceptional and was not established here. A first-instance global assessment of confusion attracts appellate restraint unless vitiated by an error of law or principle.

The respondents owned registered trade marks for MATCH.COM and match for online dating and introduction services. The appellants operated a Muslim-focused online matchmaking service under MUZMATCH and used keywords containing “match” for search-engine optimisation.

The Intellectual Property Enterprise Court held that the appellants infringed the trade marks and committed passing off: Match Group, LLC & Ors v Muzmatch Limited & Anor [2022] EWHC 941 (IPEC). It found a likelihood of indirect confusion, infringement of the marks with a reputation, and no honest-concurrent-use answer.

The appellants challenged the findings on confusion and on honest concurrent use. The central issue was whether long concurrent use could prevent infringement or passing off notwithstanding the judge’s finding that consumers would regard MUZMATCH as a Muslim-focused sub-brand of MATCH.

1. Appeal dismissed. The judge made no error of law or principle in finding a likelihood of indirect confusion. His global assessment properly treated the services as identical, the signs as having a medium degree of similarity, and the MATCH marks as highly distinctive and reputed. The appellants’ Muslim-focused offering did not negate the finding, particularly because consumers included Muslims who might use either service.
2. The judge was entitled to give little weight to the absence of detected actual confusion despite lengthy parallel trade. The evidence did not show that social-media searches capable of detecting confusion had been made. Indirect confusion was also inherently less likely to come to light. The weight of that evidence was a factual assessment for the trial judge.
3. The appeal against the finding of a link for infringement of the reputed marks also failed. The same matters which supported likely confusion supported the finding that MUZMATCH would call the MATCH marks to the average consumer’s mind.
4. Honest concurrent use is not an additional defence under Trade Marks Act 1994, Directive 2015/2436 or the EUTM Regulation. It is relevant to whether infringement is made out. In a likelihood-of-confusion claim, it bears on whether consumers understand the mark and sign to denote different trade origins; in a reputation claim, it bears on whether the required injury exists.
5. After a prima facie case, the defendant bears the burden of establishing that its honest concurrent use has eliminated adverse effect on trade mark functions. An initially infringing use can, in principle, later cease to infringe if prolonged substantial parallel trading has educated consumers that the signs denote different origins. Here the judge’s findings meant that a substantial proportion would still regard MUZMATCH as connected with MATCH. The concurrent use did not establish consumer education, nor did it displace the finding of unfair advantage or passing off.

• Court of Appeal (Civil Division): Appeal dismissed in [2023] EWCA Civ 454.
• High Court, Intellectual Property Enterprise Court: Held that the appellants infringed the MATCH trade marks and committed passing off: [2022] EWHC 941 (IPEC).