Not quite the happily ever after: Match swipes left on Muzmatch
Recently the online dating app giant, Match Group LLC (owner of Tinder, Match and Hinge) (Match) took on Muzmatch Limited (now Muzz Limited) (Muzmatch) as it sued them for trade mark infringement and passing off in the UK Intellectual Property and Enterprise Court (IPEC).
Muzmatch owns a registered trade mark for the word "muzmatch". However, back in 2018, Match opposed the application and Muzmatch reduced the services covered by the Trade Mark in order to successfully register it. However, Match then complained that Muzmatch had continued to use "muzmatch" for services not covered by its registration.
In July 2020, Match issued legal proceedings against Muzmatch, for trade mark infringement and passing off through its use of "match" in its name and its use of "match" and "tinder" as part of its search engine optimisation strategy.
In June 2021, Muzmatch accepted liability in relation to its use of "tinder" and gave undertakings, however, it denied liability in respect of its use of "match".
After a two-day trial, the Court held that Muzmatch had infringed by using "match" and took an “unfair advantage” which could lead consumers to believe the two businesses were connected.
Muzmatch argued that it did not infringe on the basis that "match" is not distinctive and is a descriptive word when used in the context of dating services. Match, however, submitted brand awareness reports up to May 2011 (when Muzmatch's infringing activities started) to show how well known the Match brand was at the time.
The reports showed "top of mind" awareness (where the brand is the first name which is said when asked spontaneously without any list) and "aided awareness" (where a brand is recognised from a list provided). The judge agreed that this evidence, (particularly the significant "top of mind" awareness) demonstrated that there was a substantial degree of distinctiveness and reputation in the brand.
Crucially the judge was satisfied that by early 2011, the average consumer would have associated uses of "match" in the context of online dating with Match.
Likelihood of confusion
In order to show trade mark infringement, Match had to show that Muzmatch's use of "match" gave rise to a likelihood of confusion under section 10(2) Trade Marks Act 1994. On reviewing the evidence, the judge concluded that the average consumer would have thought Muzmatch was a sub-brand of Match.
In this case, there was very limited evidence of actual confusion. Muzmatch argued that if there was a likelihood of confusion, then there would be credible evidence of actual confusion since Muzmatch's alleged infringement in 2011, but there was none. The judge acknowledged that the absence of actual confusion evidence was likely to be because both parties offered their services via mobile apps and websites, rather than because there was no relevant confusion. The judge stated that "it is hard to see how or why any confusion… would come to light". Going forward, as more services are offered via mobile app or online, we may well see less reliance on evidence of actual confusion.
The judge decided that, even if there was no likelihood of confusion, Muzmatch had taken unfair advantage of the reputation of Match's trade marks. By 2011, Match had a very strong reputation and had invested substantial sums in building it. By using the name in a way that created a link to Match, Muzmatch was taking some of the benefits of that reputation and investment without paying for it. Whilst the judge accepted that the CEO did not originally pick the name with this intention, the Search Engine Optimisation strategy used by Muzmatch was clearly intended to benefit from the use of "match" and took unfair advantage in doing so.
Suitability of IPEC
The judge set out in his introduction to the judgment that both sides had said the case was "simple and straightforward". He noted that there were 21 lever arch files of documents, four lever arch files of authorities and opening submissions of over 70 pages each. He made clear in a postscript to the judgment that the case was not "the simple or straightforward case the parties had suggested".
The judge cautioned that, if the parties wished to use the streamlined IPEC process, they should have attempted to narrow down the issues before the Case Management Conference and the case should have been transferred to the High Court to allow for a longer trial if that was not possible.
Breach of embargo
On 4 May 2022, the judge handed down a further judgment as a result of a breach of the embargo on the draft judgment sent to the parties on 12 April 2022. The judge sought a full written explanation from Muzmatch and their solicitors after Muzmatch acknowledged that they had spoken to journalists prior to the embargo being lifted. The judge did not take any further action but indicated it may well order Muzmatch to pay Match's costs on an indemnity basis.
The judge did not lay down guidance on the approach to be taken by the press in relation to draft judgments but was clear that "the courts are likely to look with a very critical eye at any case where a party's wish to manage the publicity surrounding litigation has led that party to breach the embargo imposed".
This case was not simple or straightforward but was particularly interesting on several points (to IP lawyers)! It shows that an arguably descriptive word can become distinctive in the market over time and be protected as a trade mark so these should not be dismissed "out of hand" by brand owners or trade mark applicants considering a new brand name. Applicants should, however, be cautious of registering descriptive marks themselves as, without evidence of distinctiveness, these are liable to be challenged if not refused.