The latest decision in the Match Group LLC v Muzmatch Ltd infringement case is an important new ruling on the application and scope of the principle of honest concurrent use. The Court confirmed that honest concurrent use is not a specific defence to infringement, but is a factor to be taken into account as part of the global assessment of infringement. 

What has happened?

• In its decision in Match v Muzmatch, the Court of Appeal has confirmed that, although honest concurrent use is a factor that can be considered in determining whether use of the defendant's mark has adversely affected the function of the claimant's mark, it is not a stand-alone defence to infringement. There are no statutory grounds for such a defence under UK or EU law.

• The Court also confirmed that honest concurrent use is relevant for claims of infringement based on unfair advantage/detriment to distinctiveness/reputation, as well as likelihood of confusion (and double identity). 

• In the case of the latter, the relevance of honest concurrent use lies in assessing whether there is a sufficient likelihood of confusion in the first place having regard to the difference in the guarantee of origin provided by the trade mark and the sign. 

• In the case of the former, the relevance lies in assessing the existence of one of the specified kinds of injury.

• 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.

• Lastly, the Court held that, to rely on honest concurrent use, it is not strictly necessary for the use of the mark complained of to have started before the trade mark alleged to have been infringed was registered. Indeed, the Court held that (rarely) use that was initially infringing could become non-infringing due to honest concurrent use. 

Want to know more?

Background 

Match.com launched in the UK in 2001 and has since traded continuously, primarily offering online introduction and dating services under various trade marks, which predominantly feature the word MATCH. Match.com own over 150 UK and EU trade mark registrations, including registrations for MATCH.COM and match with a heart logo (as depicted below).

In 2011, the Defendants set up a business called Muzmatch with the aim of providing online matchmaking services targeted at the Muslim community. 

In July 2020, match.com filed a claim for trade mark infringement and passing off at the High Court of England & Wales (IPEC). In response, Muzmatch asserted that it had a claim of honest concurrent use, meaning there was no infringement.

First instance decision

Taking the evidence as a whole and, in particular, the Claimants' dominant presence in the market, the Court decided 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 (see our article here).

The Court rejected the Defendant's claim that there was no infringement since there had been honest concurrent use of the marks in question, holding that honest concurrent use is not a stand-alone defence to infringement.

Appeal 

Muzmatch appealed the decision to the Court of Appeal on several grounds. It argued that the judge made two errors of law in rejecting the defence of honest concurrent use: 

• Holding that the defence is only available where the use of the sign complained of was non-infringing use when it started.

• Holding that the defence is only available if the use started before the trade mark was registered. 

In response, Match.com disputed that honest concurrent use is a free-standing defence, as opposed to a factor to be taken into account when assessing infringement and contended that the judge took the long concurrent use of MATCH and MUZMATCH fully into account when finding a likelihood of confusion and unfair advantage. 

In the alternative, Match contended that Muzmatch's use of the signs complained of was not honest.

The history of honest concurrent use in the UK

Honest concurrent use is a doctrine which has its origin in 19th century English equitable law. The doctrine was relied upon by the courts to permit registration of identical or similar trade marks in respect of the same classes of goods pursuant to a general discretion. 

The doctrine later received express statutory recognition, first in the Trade Marks Act 1905, then 1938 and – more recently – 1994. 

Section 7 of the Trade Marks Act 1994 provides that, where there has been honest concurrent use of the trade mark for which registration is sought, the registrar should not refuse registration by reason of conflict with an earlier trade mark or right unless objection on that ground is raised in opposition proceedings by the owner of that earlier trade mark or right. Honest concurrent use means such use in the UK as would formerly have amounted to honest concurrent use under the 1938 Act.

The EU position

Section 7 of the 1994 Act is not reflected in EU law – and yet EU law (in the form of the EU trade marks Directive) is supposed to be a complete statement of the law in this area. The question has therefore been raised as to how honest concurrent use fits into the UK (and EU) trade mark system, if at all. 

In the Budweiser case (which was very fact specific), the issue was referred to the EU's top court – the ECJ - for a preliminary ruling. The ECJ held that "… the proprietor of an earlier trade mark cannot obtain the cancellation of an identical later trade mark designating identical goods where there has been a long period of honest concurrent use of those two trade marks where, in circumstances such as those in the main proceedings, that use neither has nor is liable to have an adverse effect on the essential function of the trade mark which is to guarantee to consumers the origin of the goods or services.”

The UK position following Budweiser

The UK courts have interpreted the Budweiser ruling to mean that honest concurrent use may be relied upon as an answer to a claim for a declaration of invalidity where the use of the defendant’s trade mark has not had, and is not liable to have, an adverse effect on any of the functions of the claimant’s trade mark. This applies even where there is a small level of actual confusion (not just a likelihood of confusion) if the trade marks have come to be understood by most of the relevant class of consumers as denoting different trade sources.

It is not surprising then that the UK courts have also applied the doctrine to claims of infringement. 

Some of these cases have held that honest concurrent use is relevant even if use of the allegedly infringing right commenced after the mark alleged to be infringed was first use or registered – one of the questions raised by Muzmatch in the present appeal. If it does not matter when use of the allegedly infringing right began, then use that was originally infringing might (in rare cases) later cease to be infringing due to honest concurrent use. This differed from the position under the 1938 Act and its predecessors where honest concurrent use had been interpreted by the courts to presuppose use of a trade mark which was not originally deceptive. 

The Court of appeal's decision in Match.com

The Court of Appeal upheld the first instance decision and provided guidance on the application of honest concurrent use. In particular:

• The Court confirmed that a defendant cannot rely on honest concurrent use as stand-alone defence as there is no statutory grounds for this defence under UK or EU law.

• The court commented that, "Even if it were open to an English court to read such a defence into the 1994 Act as a matter of domestic law, which may be doubted, it is clear that this is not permissible as a matter of EU law (and the Defendants have not suggested that, with respect to acts committed since 31 December 2020, this is now possible as a result of Brexit despite the heavy imprint of retained EU law in this field)."

• In the case of claims for infringement on the basis of a likelihood of confusion, the relevance of honest concurrent use lies in assessing whether there is a sufficient likelihood of confusion in the first place having regard to the difference in the guarantee of origin provided by the trade mark and the sign. 

• Similarly, in the case of claims for infringement based on unfair advantage or detriment to distinctiveness/reputation, the relevance of honest concurrent use lies in assessing the existence of one of the specified kinds of injury.

• 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. 

• So far as the date of assessment is concerned, the general rule is that the relevant date is the date when use of the sign complained of commenced. It is not the law, however, that that is a once-and-for-all assessment. In theory, a use which was initially infringing could eventually cease to be infringing if the trade mark proprietor took no action, there was substantial parallel trade for a long period, and as a result the trade mark and the sign came to be understood by the relevant class of consumers as denoting different trade origins. This would be a rare case. 

• It follows that it is not necessary for the use complained of to have started before the trade mark was registered. The Court of Appeal commented that it did not think that the trial judge had held that it was.

• The Court adhered to a view expressed in a previous case that a mere failure to carry out a clearance search is not sufficient to negate honest concurrent use.

• Finally, the Court held that, unlike cases such as Budweiser, this is not a case where the length and scale of the concurrent use compels it to infer that most consumers have learnt the difference between the match and muzmatch marks. Muzmatch's appeal was therefore dismissed.