Match prevails in trademark feud with Muslim dating site

Muslim dating website fails again to prove its arguments based on the defence of ‘honest concurrent use’ | The company behind Tinder won last year at the Intellectual Property Enterprise Court | Case offers salutary lessons for brands in crowded markets.

The owner of dating sites  Tinder and  Match.com, The Match Group, has secured a win at the  England and Wales Court of Appeal in a long-running trademark dispute with a Muslim online matchmaking service.

The case involved the use of the words ‘Match’ and ‘Muzmatch’ in relation to online introduction and dating services.

On Thursday April 27, Lord Justices Richard Arnold and Christopher Nugee decided in favour of The Match Group, after the defendant Muzmatch appealed a decision by the Intellectual Property Enterprise Court (IPEC) in April 2022.

Background

Muzmatch, founded in 2011, previously provided online introduction (or matchmaking) services to Muslims in the UK.

This aimed to enable Muslims to find marriage partners using the more modern means of a website, but one which specifically sought to be compatible with Islamic values.

The court heard how the operator’s SEO strategy involved making a list of some 5,000 keywords that related in some way to Muslim marriage or Muslim matchmaking.

Although the word ‘match’ was not itself a keyword, there were 132 SEO keywords that contained that word, including, for example, ‘match-muslim’, ‘muslimmatch’, ‘muslim-match’ and ‘UK-muslim-match’.

The Match Group, which also owns Hinge and OkCupid, sued Muzmatch over its trademark registration for ‘Muzmatch’ in Europe and the US, accusing the start-up of “unfairly benefiting” from the company’s reputation and investment in its brand.

Match insisted that consumers would mistakenly assume that Muzmatch was a “sub-brand” specifically targeted at Muslim users because of its use of the word ‘match’.

The dating brand further contended that Muzmatch infringed its trademarks and committed passing off through the use of the word ‘Muzmatch’, and with various logos incorporating the word and certain phrases which included the word ‘match’ used by Muzmatch for search engine optimisation purposes.

Match also claimed that the defendants had infringed an EU trademark registration for the word ‘Tinder’, as well as a UK trademark registration for a slightly stylised version of that word.

Muzmatch countered that ‘match’ was simply an English word associated with matchmaking, but this argument was ultimately unsuccessful. IPEC’s decision in favour of The Match Group prompted Muzmatch to  kickstart a rebrand with the name ‘Muzz’ .

‘Honest concurrent use’

On appeal, Muzmatch contended that Nicholas Caddick KC, sitting as a deputy high court judge at IPEC, had made errors of law.

First, it argued that the judge erred by holding that the defence of honest concurrent use is only available where the use of the sign at issue was non-infringing use when it started; and second, in his view, that the defence is only available if the use started before the trademark was registered.

Commenting on the case,  Cassandra Hill, partner and head of Mishcon de Reya's IP enforcement group, noted that Muzmatch had faced significant obstacles in appeal.

“Muzmatch tried to appeal the High Court decision on a number of bases, most notably that what they were doing with their use of the ‘Muzmatch’ sign constituted honest concurrent use with Match's trademarks,” she explained.

Significant cost

But crucially, she noted that because infringement had been established, the burden was on Muzmatch to show that there was no adverse effect on the functions of Match's trademarks.

However, it failed to meet this hurdle.

“The Court of Appeal held that, even if their use had been honest (which in the end it did not need to consider), Muzmatch did not demonstrate that the relevant class of consumers had come to understand that Match's trademarks and Muzmatch's sign denoted different trade origins.

“They would assume that they were related despite almost no confusion between the trade marks and signs having been detected.

This case, concluded Hill, offers a key takeaway for brands.

“Simply because two businesses have been operating in the same market for some time and despite there being little to no confusion between the two, if one is taking unfair advantage of the other's trademarks and consumers believe there is a link between them, it will potentially be found to be infringing.”

Consequently, Muzmatch has already rebranded to Muzz, she added, “which has likely come at a significant cost to the business”.