The UK High Court (IPEC) upheld claims for infringement and passing off in a decision which highlights the value of keeping comprehensive evidence of use and reputation and also confirms that relatively descriptive trade marks can nevertheless have a broad scope of protection through use.

What has happened?

• The claimants alleged that the defendant's use of the muzmatch mark infringed their match.com, and match marks. 

• A pivotal issue in the case was the degree of protection that should be afforded to the arguably descriptive "match" element of the claimant's marks. Where marks share a common element which is descriptive, this can make it difficult to find a likelihood of confusion, but not impossible. All of the circumstances need to be considered including the degree to which the claimant's marks have acquired distinctiveness and reputation through use. 
• The claimant's evidence of brand recognition and reputation - such as annual brand monitoring surveys – were key. There was a likelihood of confusion between the claimant's "match" marks and the muzmatch mark. This was so even though there was relatively little evidence of actual confusion. The use of muzmatch also took unfair advantage of the distinctive character of the "match" marks and constituted passing off. 
• The case is a good example of how seemingly descriptive marks can – if they acquire distinctiveness and reputation through use - be given a relatively broad scope of protection. 

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Background

The Claimants launched a website in the UK in 2001 and since have traded continuously, primarily providing online introduction and dating services under various trade marks. These marks predominantly feature the word MATCH (often in combination with the suffix ".com" and/or a heart-shaped logo). They own over 150 UK and EU trade mark registrations, including 1996 and 2017 EUTM registrations for MATCH.COM and a 2015 UK registration for (the "Registrations").

In 2011, the Defendants set up a business with the aim of providing online matchmaking services targeted at the Muslim community. It was operated by a sole trader until January 2015, when a company was incorporated to take over the running of the business.

From the inception of the business in 2011 to the incorporation of the company in 2015, the Defendants' trading activities were modest, but they grew considerably following its launch of an app in March 2015. This upturn was supported by 132 keywords which featured the word 'match'; each of which had its own landing page on the Defendants' website.

In January 2016, the Claimants wrote to the Defendants asserting infringement of their 1996 EU registration, their 2015 UK registration, and also passing off. This led to without prejudice settlement discussions, but these broke down in late 2016. From September 2017 the parties were involved in negotiations, during which the Claimants made four offers to buy the muzmatch business. All were rejected and the negotiations ended in January 2019.

On 30 July 2020 the Claimants filed a claim for trade mark infringement (of the Registrations) under sections 10(2)(b) and 10(3) of the UK Trade Marks Act (the "Act"). They also claimed passing off (in respect of their unregistered rights in the trade marks MATCH.COM and MATCH. The Defendants asserted that they had a claim of honest concurrent use, meaning there was no infringement.

Reputation and Goodwill

The Claimants have conducted annual brand monitoring surveys since 2009. These recorded three levels of awareness of their MATCH brand, based upon the responses of 1000 to 2000 people, with a range of demographics. The results showed very clearly that the trade marks MATCH.COM and MATCH had a high level of awareness, which the Claimants were able to demonstrate had been achieved through a combination of:

• wide-ranging and regular advertising campaigns across a range of media
• annual advertising spend of many millions of pounds (which, in 2012, accounted for 52% of the total advertising spend in the entire dating category)
• a strong social media presence through Twitter and Facebook accounts
• a popular YouTube channel
• hundreds of thousands of UK visitors to their website annually
• hundreds of thousands of UK subscribers to its services
• annual UK sales of millions of pounds.

The Court's Ruling

Section 10(2)(b) requires that, as a result of the identity/similarity of the parties' marks and goods/services, there is a likelihood of confusion on the part of the public. The judge was satisfied that there was a medium degree of similarity between the respective marks and a reasonably high degree of similarity between their services. He was also satisfied that the trade mark MATCH.COM had acquired a very substantial degree of distinctiveness and reputation in relation to online dating services. 

When considering the Defendants' claim that 'match' is descriptive rather than distinctive, the judge referred to case law which holds that, where a claimant’s mark and a defendant’s sign share a common element which is descriptive, this may make it difficult to conclude that there is a likelihood of confusion, but it does not make it impossible. He also stated that the issue is highly fact-sensitive and has to be assessed globally, taking into account all relevant factors, including the context in which the signs have been used.

The Defendants' also asserted that, if there was a likelihood of confusion, there would by now have been credible evidence of actual confusion (beyond the three instances put forward by the Claimants). However, the judge referred to case law which holds that evidence of actual confusion "may often be readily explained and is rarely decisive. Its weight is a matter for the judge" and that it is "possible to conclude that there is a likelihood of confusion even in the absence of evidence of actual confusion".

Taking the evidence as a whole and, in particular, the Claimants' dominant presence in the market, the judge found that the average consumer would have thought that the Defendants were connected to the Claimants in some way, perhaps perceiving the marks as sub-brands specifically targeted at Muslim users and, in particular, those who felt that the services of a mainstream on-line dating service provider were not in accordance with Islamic values.

The judge held that there was infringement under this section of the Act.

Section 10(3) requires that the parties' marks are identical or similar, the registered trade mark has a reputation in the UK, and the use of the later mark is without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the registered mark.

The Claimants alleged unfair advantage and detriment to the distinctive character of its trade marks MATCH.COM. The judge was satisfied that the Defendants' use of the muzmatch trade mark was without due cause, the parties' marks had a medium degree of similarity, and that their services were partially identical and otherwise highly similar.

He was also satisfied that the Claimants' marks enjoyed a very significant reputation in the UK and were actually the dominant force in the market. Therefore, he held that there was unfair advantage. However, he dismissed the claim of detriment to distinctive character.

The judge held that there was infringement under this section of the Act.

Honest concurrent use is a concept which provides that a trader who can establish honest concurrent use of a mark might be entitled to register that mark notwithstanding the existence of another trader with earlier rights in that mark (section 7 of the Act).

The concept applies to identical and similar marks and can also be asserted by a Defendant in infringement proceedings; although not as a specific defence but, instead, in an effort to establish that, where there has been honest concurrent use, the conditions for infringement are unlikely to be satisfied.

In each of the cases in which honest concurrent use had successfully been used to fend off a claim of infringement, the Defendants had commenced use of the mark in question after the Claimants. That was not the case here. The Claimant's rights dated back to 1996, long before the defendants started to use their muzmatch mark.

The Defendants' argument was rejected by the judge.

The passing off claim required the Claimants to establish that their marks have goodwill and that there had been a misrepresentation by the Defendants which caused, or would be likely to cause, damage to that goodwill. When considering the claim, the judge was satisfied that:

• The Registrations all enjoy significant goodwill and the Claimants had also acquired goodwill in the word 'match' by itself, when used as a brand.
• Although the Claimants' services were not specifically targeted at people in the Muslim community, its goodwill nevertheless extended to that community.
• The Defendants' use of muzmatch and the keywords amounted to misrepresentations, as it would lead some consumers to assume that their services were connected with or derived from the Claimants and, in turn, this would give rise to damage to the Claimants' goodwill.

The judge upheld the passing off claim.