The use of the sign Muzmatch in a dating website and app, as well as keywords featuring the word “match”, infringed trade marks for Match and Match.com and amounted to passing off. That was the conclusion of Deputy High Court Judge Nicholas Caddick QC in Match Group, LLC V Muzmatch Ltd, a judgment in the IPEC on 20 April 2022.
The claim was brought by Match Group, which operates dating websites/apps including match.com and Tinder. It has EU and UK trade mark rights dating back to 1996.
Muzmatch was launched in April 2011 as a dating website for Muslims and expanded from March 2015 with the launch of its app. From 2012 to 2020, it adopted an SEO strategy using keywords that included “match” and “tinder”.
In 2021, Muzmatch undertook to no longer use “tinder” but argued that “match” was an ordinary descriptive word or dating services.
Is Match distinctive?
However, the judge was satisfied that Match had “a very substantial degree of distinctiveness and reputation as a brand”. By 2011, he said, the average consumer would have been aware that “match” was used both descriptively and distinctively and would have been in no doubt that, in the context of the March.com marks, it was being used in a distinctive sense.
Despite very limited evidence of actual confusion, he concluded there was a likelihood of confusion:
"I find that the use of the Muzmatch Signs was likely to lead the average consumer in this case to conclude that Muzmatch was connected in some material way with the business that used the Match.com Marks and, after 3 March 2015, with the business that used the Match Device Mark. In particular, I find that the average consumer would have thought that Muzmatch was a sub-brand of that business specifically targeted at Muslim users and particularly at those Muslim users who felt that the services of a mainstream on-line dating service provider were not in accordance with Islamic values.”
Addressing the absence of evidence of actual confusion, the judge noted that both parties’ services have been provided via websites and, more recently, apps: “Where services are provided to a customer in that manner, then any other dealings with that customer are likely to be conducted via that same website or app and are likely to relate to the services that that customer had received via that website or app. On this basis … it is hard to see how or why any confusion that there might be in the customer’s mind would come to light.”
Unfair advantage and passing off
Even if there were no likelihood of confusion, the judge found that there would be infringement under Section 10(3), as the Muzmatch signs took unfair advantage of the distinctive character of Match’s marks in Muzmatch’s branding and SEO strategy.
On the basis of the “significant goodwill” attached to the Match marks, the misrepresentation by Muzmatch and damage, there was also passing off.
Two final points are worth noting.
In a postscript to the judgment, the judge stated that the case was not suitable to be heard as a two-day trial in the IPEC, as it was neither simple nor straightforward. He concluded that the parties should have either narrowed the issues or sought to have the case transferred to the High Court.
In a subsequent judgment on 4 May 2022, the judge dealt with a breach of the embargo on the distribution of the draft judgment by the defendant: while he described the breach as “serious”, the defendant’s apology resolved the matter and there was no need for formal contempt proceedings – though there may be implications for costs.