Dating site operator, Match, which owns sites such as Match, Tinder and Hinge, has been successful in a trade mark infringement and passing off action against a site called 'Muzmatch, which offers online matchmaking services to the Muslim community.
Whilst the parties co-existed in the online dating field for over ten years, the Intellectual Property Enterprise Court concluded that Muzmatch's use had started as infringing use which had interfered with the essential function of the Match marks and had given rise to a likelihood of confusion and/or took advantage of the reputation of the Match marks, and amounted to passing off. Whilst Muzmatch did not intend to create a link or to cause confusion, thinking that the use it was making of 'match' was a descriptive one, this could not form a defence to a claim for infringement and passing off.
The case has some parallels with the 2020 decision in PlanetArt v Photobox where, in contrast, the Court found that the Claimant's trade mark for "FreePrints" was not infringed by the use of the sign "PHOTOBOX FREE PRINTS". Both cases indicate that, where both a claimant's mark and the alleged infringing sign share a descriptive element, the infringement assessment will be a highly fact-sensitive one: it must be assessed globally, taking into account all relevant factors, including the context in which the signs have been used.
The Claimants are members of the Match group and are involved in the operation of a number of well-known dating sites worldwide, including in the UK. Match owns a number of registered UK trade marks dating back to 1996, including word and device marks relating to the term "Match" for, primarily, online dating and introduction services. It launched its services in the UK in 2001.
Muzmatch was launched in early 2011 with the aim of providing the Muslim community with a service that would enable them to find a marriage partner in a way that was compatible with Islamic values. MuzMatch initially operated via a website only, before releasing an app in 2015.
Match learned of Muzmatch's activities in early 2016, and wrote to Muzmatch at that time, asserting trade mark infringement and passing off. Over the following two years, the parties were involved in settlement negotiations. Subsequently, Match brought a claim against Muzmatch in July 2020, claiming that Muzmatch's signs infringed Match's marks under sections 10(2)(b) and 10(3) of the Trade Marks Act 1994, and also amounted to passing off. As well as complaining about the use of 'match' as part of the Muzmatch name, the claim also focused on Muzmatch's use of 'match' and 'Tinder' as part of its search engine optimisation (SEO) strategy.
The Court found there to be a medium degree of similarity between the Muzmatch signs and the Match marks, that the services were identical/highly similar, and that the Match.com mark had a substantial degree of distinctiveness and reputation. On the key question of whether there was a likelihood of confusion, the Court considered this through the eyes of the average consumer: a member of the general public interested in looking for a partner through an online dating or introduction service, whose level of attention would likely be higher than normal consumers.
Match argued that a likelihood of confusion arose because Muzmatch's use of the term "match" within its name and as part of its SEO keywords was likely to cause some members of the public to be confused into thinking its services came from Match (as a 'sort of sub-brand') or from an entity that was economically linked to Match.
The Court noted that, whilst it may be more difficult to conclude that there is a likelihood of confusion where a claimant's mark and a defendant's sign share a common descriptive element, it was not impossible. Moreover, a finding of a likelihood of confusion may well be appropriate where the average consumer recognises that the common element (i.e. "match") was used distinctively as a badge of origin, even if capable of being used descriptively.
The Court concluded that the average consumer would have been well aware in 2011 that 'match' in the context of online data services was capable of both descriptive and distinctive use, and would have associated distinctive uses with Match's services. The use of 'match' in 'Muzmatch' was as a part of its business name, i.e., in a distinctive and non-descriptive sense (and the extra elements in the name and logos used would not significantly reduce the likelihood of confusion). Given Match’s dominant presence in the market as of 2011, use of the Muzmatch signs was likely to lead the average consumer to conclude that Muzmatch was connected in some material way with Match. In particular, the Court concluded that the average consumer would have thought that Muzmatch was a sub-brand specifically targeted at Muslim users and particularly those who felt that a mainstream online dating service was not in accordance with Islamic values.
Whilst Muzmatch had been trading since 2011 (albeit not on a particularly large scale until after 2016), only three instances of possible actual confusion had come to light, despite extensive research by the parties. However, noting that the absence of evidence of confusion was 'rarely decisive', the Court decided that here it reflected the fact that the parties' respective services were provided via websites and apps, i.e., in circumstances where it was hard to see how or why any confusion could come to light.
The Court also found that, even if there was no likelihood of confusion, the Muzmatch signs took unfair advantage of the distinctive character or repute of the Match marks. By using the name “Muzmatch” in a way that created a link to the Match.com marks (and particularly in relation to identical or, at least, highly similar goods or services), Muzmatch had taken some of the benefits of Match's reputation and investment without paying for it. Further, its SEO strategy (which included the use of the name 'Tinder') demonstrated an intention to benefit from Match's reputation. Finally, the Court also concluded that the use of the Muzmatch sign amounted to passing off.