It’s a match! Match Group wins appeal against Muzmatch
Locations
This case is particularly interesting for its analysis of honest concurrent use, in that it is not a standalone defence but should be viewed in the wider consideration of infringement generally.
Background facts
Match.com launched in 2001, offering online dating services in the UK. Muzmatch is also an online dating business, aimed at the Muslim community. Muzmatch opened online in 2011 and via an app in 2015. As part of its marketing strategy, Muzmatch used various SEO keywords including 132 including the word match (e.g. muslimmatch) and the names of other online dating sites such as Tinder.
From 2017-2019 the parties were engaged in discussions for Match Group to purchase Muzmatch, before the relationship turned sour and Match Group issued proceedings for trade mark infringement in 2020.
First time
The claim was based on section 10(2) and 10(3) of the Trade Marks Act 1994 ("TMA"), alongside passing off. The claim succeeded on all counts.
Important for the appeal, is how the first instance judge held that honest concurrent use was not available as a defence as Muzmatch's activities were always infringing, and Match.com objected to those activities as early as 2016. The defence of honest concurrent use was held not to apply; this is discussed further below.
Swipe again
Muzmatch appealed against the IPEC's decision on trade mark infringement and passing off on various grounds. This article will focus on the discussion of honest concurrent use, although it is worth briefly mentioning that on most grounds of appeal, the Court of Appeal found that the trial judge, having had the benefit of seeing the evidence, had been entitled to reach the conclusions he had; on that basis, it is not surprising that the appeal failed.
Muzmatch argued that the IPEC judge was wrong to hold that the honest concurrent use defence could not apply where the complained of use was infringing from the start, and further that complained of use must start before the replied upon trade mark was registered.
Arnold LJ for the Court of Appeal held that the IPEC judge was correct to find that honest concurrent use was not a separate defence, but rather a factor to be considered in the infringement analysis. To support this, Arnold LJ noted how honest concurrent use does not appear as a defence in the relevant law (being EU Trade Marks Regulation ((EU) 2017/1001), the Trade Marks Directive ((EU) 2015/2436) and the TMA).
Looking into this point deeper, Arnold LJ explained that the date of assessing honest concurrent use is generally, but not always, when the complained of use begins. That was the case here. Use that is initially infringing can evolve into non-infringing use if the trade mark owner takes no action (e.g. acquiescence) and there is substantial parallel trade for a significant time, which results in relevant consumers understanding that the relevant signs have different origins. This had not happened here.
As argued by Muzmatch, it was not necessary for their alleged honest concurrent use to have started before the trade mark was registered (it had in fact started after the mark was registered). However, Arnold LJ did not think that the IPEC decision had held that it was in any event, and this did not impact the outcome.
The key take away from this appeal decision is that once infringement is found, the burden then shifts to the defendant to establish how, due to honest concurrent use, there had been no adverse effect on any of the functions of the relevant trade mark. In this case, Muzmatch could not overcome that hurdle.
Final thoughts
Honest concurrent use isn’t often considered in such detail, and so Arnold LJ's judgment provides helpful analysis for practitioners. With significant history between the parties, especially the takeover discussions, it isn’t surprising that honest concurrent use was a key factor in the case. The clearer guidelines on how to plead honest concurrent use may change how defendants present this issue in future cases, although, as ever, it will always depend on the facts in question.