Trade Marks and Passing off: Match Group, LLC v Muzmatch Ltd
Intellectual Property Intellectual Enterprise Court (Mr Nicholas Caddick KC) Match Group LLC v Muzmatch Ltd. [2022] EWHC 941 (IPEC) 22 April 2022
This was an action for trade mark infringement and passing off. The claimants are members of the Match Group which operate a worldwide online dating service. The defendants operated an online dating service for Muslims formerly known as Muzmatch but now called Muzz. The claim was issued in the implementation period after the UK had left the European Union but while EU law continued to apply. The Match Group complained that Muzz had infringed several of its UK and EU trade marks. The case came on before Mr Nicholas Caddicl QC (as he then was) on 17 and 18 Jan 2022. At para [149] of his judgment of 20 April 2022, the learned deputy judge found that the defendants had infringed the trade marks and were liable for passing off (see Match Group LLC and others v Muzmatch Ltd and another [2022] EWHC 941 (IPEC)).
The Marks
The marks alleged to have been infringed were as follows:
| Trade Mark | Filing date | Number | Services relied on |
MATCH.COM | 1 April 1996 | EUTM 000182253 | Class 42: “information and consultancy services in the nature and field of online dating and introduction services” |
MATCH.COM | 13 January 2017 | EUTM 016246639 | Class 9: inter alia “downloadable software in the nature of a mobile application for internet-based dating and introduction” Class 42: a social media website Class 45: inter alia “dating services; internet-based social networking, introduction and dating services” |
| 3 March 2015 | UKTM 3097217 | Class 45: inter alia “providing social introduction and date-arranging services, dating agency services, matchmaking services; computer dating services; provision of dating agency services via the Internet” |
TINDER | 5 November 2013 | EUTM 012278396 | Inter alia Class 45: dating services |
| 7 October 2016 | UKTM 3190024 | Inter alia Class 45: dating services |
The Dispute
The defendants admitted to infringing the TINDER marks but not those incorporating the word MATCH. They argued that MATCH used by itself was not distinctive and that the claimants were wrongly seeking to monopolize an ordinary descriptive word when used in relation to matchmaking and dating.Trade Mark Infringement
The claimants claimed that the defendants had infringed their UK marks.10 (2) and (3) of the Trade Marks Act 1994 and their EU marks under art 9 (2) (b) and (c) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (codification)(Text with EEA relevance. ) OJ L 154, 16.6.2017, p. 1–99 ("the EU trade mark regulation"). There was no counterclaim for invalidation of any of the marks in suit.
The Average Consumer
Mr Caddick set out s.10 (2) and (3) of the Act at para [71] of his judgment and noted at [72] that the test for infringement under both subsections is conducted through the eyes of the "average consumer". He said that the average consumer is a consumer of the goods or services in question who in this case would be a member of the general public who is or may be interested in looking for a partner by means of an online dating or introduction service. There had been some discussion as to whether Muslim dating service users differed from others. The deputy judge rejected that suggestion. He found that the average consumer might be of any race, creed, age, sex or background.
Claim under s.10 (2)
He said that the conditions for infringement under s.10 (2) had been summarized by Lord Justice Kitchin at para [28] of his judgment in Comic Enterprises v Twentieth Century Fox Film Corp [2016] FSR 30, [2016] ETMR 22, [2016] EWCA Civ 41:
He said that the conditions for infringement under s.10 (2) had been summarized by Lord Justice Kitchin at para [28] of his judgment in Comic Enterprises v Twentieth Century Fox Film Corp [2016] FSR 30, [2016] ETMR 22, [2016] EWCA Civ 41:
He also mentioned Lord Justice Kitchin's further guidance in para [52] of his judgment in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] ETMR 17, [2012] FSR 19, [2012] EWCA Civ 24:
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;
(k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion..”
There was no dispute that conditions (i) to (iii) of Comic had been satisfied. As to condition (v) the deputy judge held that there was a reasonably high level of similarity between the specified services and those provided by the first defendant.. With regard to condition (iv) he found a medium level of similarity between the registered and the Muzmatch signs.
Before addressing the 6th condition, Mr Caddick distilled the following guidance from paras [52 (d)] and [87] of Lord Justice Kitchin's judgment in Specsavers:
"a. The issue of the likelihood of confusion must '…normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make a comparison solely on the basis of the dominant elements'; and
b. 'In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context'."
As the defendants had argued that MATCH was descriptive. the learned deputy referred to paras [26] tp [29] of Mr Daniel Alexander QC's judgment in Planetart LLC v Photobox Ltd. and another [2020] WLR(D) 266, [2020] EWHC 713 (Ch), [2020] Bus LR 2048 where a similar issue had arisen:
“[26] One aspect of the approach to determining whether there is a likelihood of confusion which is important to this case is the significance of the adoption of common descriptive elements. In Reed Executive Plc v Reed Business Information Ltd [2004] [2004] Masons CLR 29, (2004) 27(6) IPD 27058, [2004] RPC 40, [2004] Info TLR 55, [2004] EWCA Civ 159, [2004] ETMR 56 at [83]–[84] the Court of Appeal said:
'...where you have something largely descriptive the average consumer will recognize that to be so, expect others to use similar descriptive marks and thus be alert for detail which would differentiate one provider from another.'
See also Elliott v LRC Products (O/255/13 at [57]) where the Appointed Person, Daniel Alexander QC, observed that consumers are less likely to think that two descriptive marks denote businesses that are connected with one another because a credible and dominant alternative explanation exists for the similarity in marks which has nothing to do with their denotation of a common trade source, namely that the similarity is attributable to their descriptiveness.
[27] The case law does not suggest that there are general rules as to how descriptiveness should be taken into account but it is clear that it should be done. The fact sensitivity of such is illustrated in a number of cases. For, example, one concerning registration of a figurative mark incorporating “VAPE & Co” for e-cigarettes which was opposed by the proprietor of a prior registration for a figurative mark including the words “The Vape Co” (Nicoventures Holdings Ltd v The London Vape Company Ltd [2017] EWHC 3393 (Ch)). Birss J said (see [31]–[36]):
'The nature of the common elements needs to be considered and in a case like this, in which the common elements are elements which themselves are descriptive and non-distinctive ... it is necessary somewhere to focus on the impact of this aspect on the likelihood of confusion. As has been said already it does not preclude a likelihood of confusion but it does weigh against it. There may still be a likelihood of confusion having regard to the distinctiveness and visual impact of the other components and the overall impression but the matter needs to be addressed.'
[28] That approach drew on the analysis by Arnold J of the case law of the European courts in Whyte and Mackay v Origin [2015] ETMR 29, [2015] EWHC 1271 (Ch) where he said at [44]:
'...what can be said with confidence is that, if the only similarity between the respective marks is a common element which has low distinctiveness, that points against there being a likelihood of confusion.
[29] These cases show that there is no hard rule that use of a descriptive term cannot lead to a finding that there is confusion but they also show that such a case is harder to establish. It also has the impact of somewhat downgrading the significance of conceptual similarity in the evaluation of the likelihood of confusion at least in so far as the mark is descriptive of the goods and services in question.”
At para [91] of his judgment, Mr Caddick concluded:
The learned deputy judge concluded that notwithstanding the differences between the defendants' signs and the registered mark, there was a likelihood of confusion arising in respect of the use of the word “match” in the Muzmatch signs for the reasons he set out in para [93] of his judgment.
The defendants had argued that the likelihood of confusion was slight as only three possible instances of actual confusion had come to light since 2011. Mr Caddick referred to para [99] of Mr Justice Arnold's judgement in Jack Wills Ltd v House of Fraser (Stores) Ltd. [2014] FSR 39:
“… As I have said in a number of judgments, absence of evidence of actual confusion is not necessarily fatal to a claim under art.5 (1) (b). The longer the use complained of has gone on in parallel with use of the trade mark without such evidence emerging, however, the more significant it is. Other relevant factors are the scale of the use complained of and the likelihood of actual confusion being detected.”
He also quoted paras [84] to [87] of Mr Justice Hildyard's judgment in Fine & Country Ltd v Okotoks Ltd. [2012] EWHC 2230 (Ch):
“[84] The courts recognise, however, that finding and producing actual evidence of confusion is difficult. Members of the public are reluctant to attend court. Moreover, people who are confused and deceived may remain confused and deceived, and there is no reason why this should come to the attention of the parties. Furthermore, members of the public who were once deceived, but then appreciate that they were misled, will frequently have no reason to draw this to the attention of the parties, especially if the realisation comes some time after any relevant dealing with the parties. Finally, persons may be deceived, and decide not to do business with the claimant as a result. They have therefore no reason to contact the parties and inform them of the confusion. For these reasons, evidence of actual confusion and deception is often decisive, but its absence is not.
[85] Thus, in Phones 4U at [45] Jacob LJ observed:
'It should also be remembered here that it is seldom the case that all instances of deception come to light — the more perfect the deception the less likely that will be so.'
[86] More recently in Specsavers v. Asda Stores [2010] EWHC 2035 at first instance, Mann J said in relation to a defence based on absence of confusion:
'First, Mr Purvis relied on a complete absence of complaints about confusion from Asda customers despite the 6 months that the logo had been present in the stores to the date of the trial. There was unchallenged evidence as to complaints procedures and handling, and none were recorded. I give this little weight. For this route to have yielded any relevant complaints there would have to have been customers who were confused, who then had their confusion removed, and who then felt sufficiently strongly about it to complain to Asda formally about it. This does not seem to me to be a likely scenario. I have difficulty in imagining how this can arise in practice.'
[87] In Harrods v. Harrodian School Millett LJ said:
'Evidence of actual confusion is always relevant and may be decisive. Absence of such evidence may often be readily explained and is rarely decisive. Its weight is a matter for the judge.'
Kerr LJ (dissenting, but not on the approach to evidence of confusion) put the point this way:
'Even if there is no evidence of confusion whatever, the court must decide for itself, and may conclude that passing-off has been established: see e.g. per Sir Raymond Evershed M.R. in Electrolux Ltd v. Electrix Ltd (1953) 71 R.P.C. 23 (CA) at p. 31. Thus, it has often been said that the availability of such evidence is important, but not its absence, because it is notoriously difficult to obtain such evidence.' ”
Mr Caddick concluded at para [98] of his judgment:
"It is, therefore, possible to conclude that there is a likelihood of confusion even in the absence of evidence of actual confusion. Indeed, as the passages quoted above show, the absence of evidence of confusion is 'rarely decisive'. It is, as Hildyard J said in Fine & Country at [83], a matter for the trial judge to determine on the facts."
"It is, therefore, possible to conclude that there is a likelihood of confusion even in the absence of evidence of actual confusion. Indeed, as the passages quoted above show, the absence of evidence of confusion is 'rarely decisive'. It is, as Hildyard J said in Fine & Country at [83], a matter for the trial judge to determine on the facts."
He found that the absence of evidence of actual confusion was not because there had been no relevant confusion but rather because Match’s and Muzmatch’s services have been supplied through separate websites and apps
Claim under s.10 (3)
The learned deputy judge directed himself that Lord Justice Kitchin had set out the test for infringement under s.10 (3) of the Trade Marks Act 1994 at para [111] of Comic:
As to the 1st requirement, Mr Caddick noted that Mr Justice Arnold had said at para [90] of Red Bull GmbH v Sun Mark Ltd and another [2012] EWHC 1929 (Ch) (17 July 2012)the task of showing that a mark has a reputation in the UK is not intended to be particularly onerous. Evidence of the claimants' advertising and business activities clearly establishes that EU trade mark number 000182253 had a very significant reputation in 2011. It was clearly known by a very substantial part of the public concerned with dating and introduction services. In fact, it was the dominant force in the market. However, he added that the position was different from British trade mark number 3097217. He found that the mark could have acquired no distinctiveness by 3 March 2015.
In respect of requirement (v), Mr Caddick noted that he had already found that there was already a medium degree of similarity between the mark and signs when dealing with the s.10 (2) claim.
With regard to the 7th requirement, the deputy judge directed himself that what was required was a certain degree of similarity between the registered marks and the signs such that the average consumer would make a connection between them. He reminded himself that it is not necessary for the average consumer to be confused. It is enough that the sign would call the registered mark to mind. He was satisfied that the similarity between marks and signs was such that they would establish a link in the mind of the average consumer.
As regards requirement (viii), the claimants alleged that the defendants had taken unfair advantage of the distinctive character or repute of the registered marks and that their use of their signs had been detrimental to the distinctive character of these marks. On whether unfair advantage had been taken of the distinctive character or repute of the registered mark, Mr Caddick directed himself that the following principles apply:
"a. The more immediately and strongly the protected mark is brought to mind by the sign complained of, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark– see L'Oreal at [44]. In this sense, the stronger the reputation of the protected mark, the more likely it is that to create a link to it would be unfair.
b. There is no need to show a likelihood of confusion or a likelihood of detriment to the distinctive character or repute of the mark or, more generally, to its proprietor. Instead, unfair advantage is taken where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark - see L’Oreal at [49]-[50] and Specsavers at [127].
c. Whilst a defendant is most likely to be found to have taken unfair advantage of the reputation of a trade mark where that defendant intended to take such advantage, such an intention is not a necessary element for liability under s.10(3). Liability may arise where the court is satisfied that the objective effect of the use which has been made of a sign is to enable the defendant to benefit from the reputation of the protected mark - see Sky Plc v SkyKick UK Ltd [2018] EWHC 155 (Ch) per Arnold J at [315] and Jack Wills Limited v House of Fraser (Stores) Limited [2014[ EWHC 110 per Arnold J at [80]."
Applying those principles to the evidence before him, the deputy judge had no doubt that the Muzzmatch signs took unfair advantage of the distinctive character or repute of the registered marks. As he put it in para [121]:
Turning to detriment to the distinctive character of the Match Marks, Mr Caddick referred to para [39] of the Court of Justice's judgment in Case C-487/07 L'Oreal v Bellure NV [2010] Bus LR 303, [2010] RPC 1, [2009] EUECJ C-487/07, [2009] ETMR 55, [2009] ECR I-5185:
He added at [132] of his own judgment:
"In determining whether there has been such dilution, the stronger the link that the sign makes to the protected mark, and the stronger the reputation enjoyed by that mark, the more likely it is that a court will conclude that there has been detriment to it. However, in order to show such detriment, a claimant must prove (by evidence) actual injury to its mark - in the sense that there has been a change in the economic behaviour of the average consumer or at least a likelihood that there will be such a change (see Comic Enterprises per Kitchin LJ at [114] and [116]-[118]) and Skykick per Arnold J at [310]"
"In determining whether there has been such dilution, the stronger the link that the sign makes to the protected mark, and the stronger the reputation enjoyed by that mark, the more likely it is that a court will conclude that there has been detriment to it. However, in order to show such detriment, a claimant must prove (by evidence) actual injury to its mark - in the sense that there has been a change in the economic behaviour of the average consumer or at least a likelihood that there will be such a change (see Comic Enterprises per Kitchin LJ at [114] and [116]-[118]) and Skykick per Arnold J at [310]"
In the absence of any evidence that the use of the Muzmatch signs had led (or was likely to lead) to any change in the economic behaviour of the average consumer. he concluded that the claim under this head had to fail.
Regarding the last requirement. Mr Caddick noted that it was up to a defendant to show "due cause", He referred to paras [42] to [45] pf Daniel Alexander QC's judgment in Planetart:
“[42] First, having regard to the general principles of trade mark law, which require consideration of marks as a whole, the question of whether (for example) there are interests of other economic operators having signs capable of denoting their products and services justifying the use of the sign must be evaluated by reference to the mark and sign taken as a whole. In the case of a mark composed of a number of elements, the court should consider whether those interests should reasonably permit the use of all of those elements in combination, not merely some of them.
[43] Second, the approach should not be so strict that it is only where a defendant proves that there is no practical alternative at all to the use of the sign in question that a defendant's sign would be regarded as being used with due cause. There has to be some degree of latitude, which will depend on the circumstances of the trade. However, it must be borne in mind that this provision only comes into play after it has been found that there is not only a link between the registered trade mark and the sign but also that it has taken unfair advantage or is detrimental to the distinctive character of the trade mark in the sense that the case law has required. That does raise the bar for a defendant to show that the use of the sign is nonetheless with due cause.
[44] Thirdly, where the registered mark includes descriptive elements (or other elements which are less likely to have trade mark significance—such as a colour or design) and the case for application of s.10(3) is largely based on the common use of such elements, the easier will it be for a defendant to show that the use of those elements is with due cause. That approach gives effect to the purpose of the law articulated in Leidesplein and Argos.
[45] Fourthly, cases are highly fact dependent but the court should seek a proportionate response. The greater the intrusion into the trade mark proprietor’s legitimate interests in the ways that the law seeks to protect against, the stronger will need to be the defendant’s justification for nonetheless using the sign in question.”
“[42] First, having regard to the general principles of trade mark law, which require consideration of marks as a whole, the question of whether (for example) there are interests of other economic operators having signs capable of denoting their products and services justifying the use of the sign must be evaluated by reference to the mark and sign taken as a whole. In the case of a mark composed of a number of elements, the court should consider whether those interests should reasonably permit the use of all of those elements in combination, not merely some of them.
[43] Second, the approach should not be so strict that it is only where a defendant proves that there is no practical alternative at all to the use of the sign in question that a defendant's sign would be regarded as being used with due cause. There has to be some degree of latitude, which will depend on the circumstances of the trade. However, it must be borne in mind that this provision only comes into play after it has been found that there is not only a link between the registered trade mark and the sign but also that it has taken unfair advantage or is detrimental to the distinctive character of the trade mark in the sense that the case law has required. That does raise the bar for a defendant to show that the use of the sign is nonetheless with due cause.
[44] Thirdly, where the registered mark includes descriptive elements (or other elements which are less likely to have trade mark significance—such as a colour or design) and the case for application of s.10(3) is largely based on the common use of such elements, the easier will it be for a defendant to show that the use of those elements is with due cause. That approach gives effect to the purpose of the law articulated in Leidesplein and Argos.
[45] Fourthly, cases are highly fact dependent but the court should seek a proportionate response. The greater the intrusion into the trade mark proprietor’s legitimate interests in the ways that the law seeks to protect against, the stronger will need to be the defendant’s justification for nonetheless using the sign in question.”
The deputy judge noted that honest concurrent use was a concept of s,12 (2) of the Trade Marks Act 1939 which had been carried into the 1994 Act by s.7 but was not recognized by EU or British legislation. Nevertheless, he noted in [138]:
He added that where the concept operates, its effect is that the parties must live with such confusion as is inevitable given their long period of concurrent use.
Mr Caddick said that in cases such as Budweiser, the use relied on as being honest concurrent use seems not to have been infringing use when it started. Indeed, in each of them, the claimant’s mark was registered after (usually well after) the honest concurrent user had started. In contrast, in the present case, Muzmatch’s use started as infringing use of Match’s prior registered mark. That use had interfered with the essential function of that mark. It had given rise to a likelihood of confusion and/or taken unfair advantage of the reputation of that mark. The defence appeared to the deputy judge to be one of acquiescence, estoppel or limitation. None of those issues was for him to decide. He, therefore, rejected the defence.
Mr Caddick said that in cases such as Budweiser, the use relied on as being honest concurrent use seems not to have been infringing use when it started. Indeed, in each of them, the claimant’s mark was registered after (usually well after) the honest concurrent user had started. In contrast, in the present case, Muzmatch’s use started as infringing use of Match’s prior registered mark. That use had interfered with the essential function of that mark. It had given rise to a likelihood of confusion and/or taken unfair advantage of the reputation of that mark. The defence appeared to the deputy judge to be one of acquiescence, estoppel or limitation. None of those issues was for him to decide. He, therefore, rejected the defence.
Passing off
Mr Caddick dealt with this shortly. He found that the claimants had acquired goodwill not only in the mark Match.com but also in the word “MATCH” when used distinctively. The same was true of the device marks. Their goodwill extended throughout the community including Muslims. He was satisfied that the use of the Muzmatch Signs did constitute misrepresentations in that they would have led some consumers to assume that the goods and services offered by Muzmatch were somehow connected with or derived from Match. Given the likelihood of confusion, damage would be caused to the claimants' goodwill. He had already rejected the honest concurrent user defence in relation to s.10 (3). The passing off claim therefore succeeded.Allocation
At para [2] of his judgment, Mr Caddick noted that there had been 21 lever arch files of documents, 4 lever arch files of authorities and more than 70 pages of opening submissions from each side. In a postscript, he expressed the view that this case was not appropriate for IPEC. The 2-day time limit on the trial meant that there was insufficient time for oral argument. He had to rely on written argument which had made his task harder, Neither side needed the costs cap. The parties should have limited the issues if they wanted a 2-day trial or applied for its transfer to the Chancery Division Intellectual Property List.
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