What is honest concurrent use of a trade mark?
The Court of Appeal has upheld the English High Court findings of trade mark infringement and passing off in the litigation between match.com and Muzmatch, which provides matchmaking services to Muslims in the UK. We covered the first instance judgment in May 2022.
Most of the Court of Appeal judgment focused on an analysis of Muzmatch’s defence of honest concurrent use.
Likelihood of confusion under Section 10(2)
The first instance judge had found a likelihood of indirect confusion under section 10(2) Trade Marks Act 1994 (TMA) between Muzmatch’s signs (and the use of SEO keywords including “match”) and the match.com trade marks. On appeal, Muzmatch argued that the judge should have taken into account the absence of evidence of actual confusion despite the parties having traded side-by-side for over 10.5 years.
However, in his judgment, with which the other two judges agreed, Lord Justice Arnold said that these questions of assessment of the evidence fell squarely within the remit of the judge:
“The judge was alive to the point that there was very little, if any, evidence of actual confusion despite over 10 years of parallel trade. The weight to be accorded to this factor was a matter for him. He made no error of principle in deciding to give it little weight in the particular circumstances of this case.”
This meant that the passing off finding was also upheld. Arnold LJ further said that the judge’s finding of a link as required under Section 10(3) TMA was “unimpeachable”.
Honest concurrent use of a trade mark
Arnold LJ described the defendants’ defence of honest concurrent use as “the most important issue raised by this appeal” and reviewed in detail the UK and EU on the defence in both trade mark infringement and passing off claims.
The first instance judge held that the honest concurrent use defence was only available where use of the sign complained of was non-infringing when it started and if the use started before the trade mark was registered. Muzmatch argued that he erred in law in making these findings.
Arnold LJ concluded that the judge correctly found that honest concurrent use is not a separate defence, but a factor in the infringement analysis. It is also the case that, “once the claimant has established a prima facie case of infringement, the burden shifts to the defendant to establish that, by virtue of its honest concurrent use, there is nevertheless no adverse effect on any of the functions of the trade mark.”
While the general rule is that the relevant date is the date when the use of the sign complained of commenced, this is not “a once-and-for-all assessment”. It is not therefore necessary for the use complained of to have started before the trade mark was registered. In this case, the judge considered whether there was a likelihood of confusion in March/April 2011, March 2015 and January 2017, taking into account available evidence after those dates. Arnold LJ said:
“He was correct to do so, because, as is well established, evidence which post-dates the relevant date is capable of throwing light backwards on the position as at the relevant date. Although it would, in principle, be possible to conclude that, while there was a likelihood of confusion as at April/May 2011, there was no such likelihood by the time of the trial, the judge’s analysis eliminates that possibility.”
Finally, Arnold LJ noted that honest concurrent use may lead to the conclusion that there has been no infringement, even where there is a small level of actual confusion, if most of the relevant class of consumers have come to understand that the trade mark and the sign denote different trade origins, saying: “Although the judge did not in terms ask himself whether most of the relevant class of consumers had been educated to understand that MUZMATCH was unrelated to MATCH, I consider that it is clear from his analysis of the likelihood of confusion that, had he posed himself that question, his answer would have been in the negative.” In other words, this was not a case where the length and scale of the concurrent use compelled the inference that most consumers have learnt the difference between the marks.
What does this mean?
In his conclusion, Arnold LJ quoted Sir Robin Jacob’s aphorism: “Like gardens trade mark cases always get worse with neglect.” Match learned about Muzmatch’s activities in January 2016 but did long bring proceedings until July 2020, after protracted discussions between the parties regarding settlement/acquisition and an opposition case at EUIPO.
The result was a strongly contested dispute and two long judgments. However, the review of the honest concurrent use in Arnold LJ’s judgment, and the practical points he makes, will be very useful in other cases where similar issues are raised.