The Match Group has won its case for trademark infringement and passing off against Muzmatch, after alleging the company made use of a confusingly similar name (i.e. Muzmatch) and used The Match Group’s brands as part of its search engine optimisation strategy.
Muzmatch claimed a defence of honest concurrent use, which was rejected. It has now rebranded to Muzz, following the finding of infringement by the Intellectual Property Enterprise Court (IPEC).
Romantic hopefuls of the past 30 years may be familiar with the online dating service Match.com and those who are not will likely be familiar with the Match Group’s newer brands including Tinder, Hinge and Ablo. Muzmatch, as it was formerly known, is a popular dating app amongst single Muslims who wish to date whilst respecting their religious beliefs.
A similar sign for identical services
Muzmatch had been making use of the mark since January 2012 and had also been accused of making use of the Match Group’s trademarks in its SEO strategy. Muzmatch’s SEO strategy involved taking keywords, which included “Tinder” and “muslim-match”, and inputting them to a landing page. If users carried out a search on one of these keywords, the landing page might appear within the search results which would then redirect to Muzmatch’s website via a link.
The Match Group’s primary argument was that the Muzmatch mark was similar to its own registered trademark and it was being used in relation to goods and services which are identical or similar, leading to a likelihood of confusion on the part of the public.
Counsel for Muzmatch did put forward the argument that the average consumer of Muzmatch’s services is distinguishable from that of The Match Group, on the basis that the market for Muslim dating is “discrete and distinct”. The judge rejected this on the basis that practicing Muslims are hugely diverse, so cannot be placed into a single category and a practicing Muslim may therefore be considered a “typical user of dating services”.
The judge considered that there was a medium level of similarity between the marks “Match” and “Muzmatch”. Likelihood of confusion was established, as the use of Muzmatch in respect of dating services was likely to cause members of the public to be confused into believing Muzmatch’s services come from the Match Group, most likely that Muzmatch was a sub-brand of Match.com specifically targeted at Muslim users.
Interestingly, the Match Group were only able to provide three instances of actual confusion, despite extensive disclosure on both sides. Whilst the absence of actual confusion is always relevant, it is not necessarily fatal to a claimant seeking to establish confusion. As the judge pointed out, since the customers in this case are users of a website or app, it is likely that instances of confusion would not come to the attention of either party. Indeed, how many users of dating sites would be bothered to alert either party if they accidentally used the services of the other, when the consequence of the confusion would simply be to hit the ‘back button’?
The Match Group was also able to bolster its likelihood of confusion case by pointing to Muzmatch’s SEO keywords which would redirect users to its site. This was likely to cause members of the public to be confused into believing there was an economic link between the entities.
In addition, the Match Group was able to easily satisfy the court that its mark had significant reputation amongst a very substantial part of the public concerned. The judge considered that the Match marks strong reputation along with the similarity between the marks and services would cause the average consumer to form a link between the parties.
Accordingly, the Match Group’s claim for unfair advantage by the Muzmatch marks was established. In particular, the judge found that the use of keywords such as Tinder was evidence of Muzmatch’s intention to benefit from the reputation of the Match Group.
However, the judge rejected the submission that the use of Muzmatch by the defendant would cause detriment to the distinctive character of the Match Group’s registered marks, whether by dilution, blurring or tarnishing their reputation.
Muzmatch raised the defence of honest concurrent use, on the basis that that it had been trading for a sufficiently long time alongside the Match Group and that the public had been sufficiently educated to distinguish between them. The court rejected this on the grounds that Muzmatch’s use was infringing from its inception and that the Match Group had made it clear to Muzmatch that they objected to their use from as early as 2016.
Notably, Mr Younas, founder of Muzmatch was found to have breached the usual embargo of the draft judgment, by revealing the outcome to as many as ten journalists before it was formally handed down. Mr Younas apologised to the court and was able to avoid contempt proceedings, but lawyers and their clients should take note that the court’s patience in this area has recently been tested. In a recent Court of Appeal decision, it was noted that the permitted category of “those who needed to know in order to fulfil the purposes” only included persons working within the company itself, and went no wider.
This case has also reiterated the need for claimants to choose their court with regard to the complexity of the case. In the body of the judgment, the judge expressed his disappointment that, despite the trial being heard for just two days, it was presented with over 21 lever arch files of documents and opening submissions exceeding 70 pages. The judge then added a post-script observation to his judgment stating this case was too complicated for a standard IPEC trial. Whilst the parties were not criticised for the standards of their trial preparation or advocacy, the judge noted that the case was run “as if it was normal High Court litigation”.
Whilst claimants will want to benefit from the helpful IPEC cost caps, the court has made it plain that complex litigation should not be inappropriately commenced in the IPEC, in order to mitigate costs risk.