A recent Intellectual Property Enterprise Court has decided that ‘Muzmatch’, an online matchmaking service to the Muslim Community has infringed Match’s registered trade marks.
The decision by Nicholas Caddick Q.C was that Muzmatch’s use of signs and its name amounted to trade mark infringement and/or passing off of Match’s trade marks. This case follows successful oppositions by Match to Muzmatch’s registration of its , and unsuccessful attempts by Match to purchase Muzmatch between 2017 and 2019.
In the list of the keywords used, Muzmatch used the words ‘muslim-tinder’, ‘tinder’ and ‘halal-tinder’ which were accepted by Muzmatch during the litigation to have infringed Match’s trade marks of the Tinder brand including the word mark ‘TINDER’
Match is one of the largest and most recognisable dating platforms in the UK. It first registered a word mark ‘MATCH’ in 1996 and also owns other dating-related brands including Tinder and Hinge with other TNS report to illustrate its goodwill and reputation and 70% of people surveyed would be able to recall Match if prompted, 44% unprompted and 31% of people would name Match as the first dating brand off the ‘top of their head.’
Muzmatch is a comparatively niche but growing dating platform, which aims to provide a halal (i.e. in compliance with Islamic law) way for single Muslim men and women to meet a partner. Muzmatch is comparatively much smaller and was founded in 2011 by Mr Shahzad Younas and now has had around 666,069 sign-ups in the UK alone.
The Court considered that the marks ‘Muzmatch’ and ‘MATCH’ and each company’s graphical marks, had a high degree of similarity in the services provided. The marks were also similar in nature orally and conceptually and the addition of the prefix ‘Muz’ did not distinguish the two marks, nor could the lack of the suffix ‘’ or stylistic fonts/devices.
The key issue of the case relates to the idea of the term ‘Match’ which is used by both marks to describe the nature of the business: match[ing]. Muzmatch argued that as both marks share this descriptive common element, so it is difficult to conclude that there is a likelihood of confusion between the two marks as the term just describes what each business does.
The Court found that finding that there is a likelihood of confusion for a common descriptive element is not impossible, as the descriptive element can be used distinctively. The average consumer would conclude that the portion ‘Match’ is the badge of origin for Match due to its reputation as a brand and the very substantial degree of distinctiveness in the dating industry. An average consumer would have seen the word ‘Match’ as the dominant element in the Match trade marks and Match is often referred to as just ‘Match’ in advertisements.
Aside from its marks, Muzmatch utilised a Search Engine Optimisation strategy from whereby it utilised a list of around 5000 keywords which would take a user to a landing page on the its website. Muzmatch’s SEO use was also found to cause confusion based on some of its keywords including ‘UK Muslim Match’, which again uses the term Match distinctively, therefore a consumer may confuse a link to ‘UK Muslim Match’ with ‘Match’.
An average consumer would conclude that Muzmatch was connected in a material way with the Match marks, as if it was targeted at Muslim users as a sub-brand, so this confusion would be trade mark infringement under S10(2) of the Trade Marks Act 1994.
The Court also considered that Muzmatch had taken unfair advantage of Match’s trade marks and had therefore infringed those marks under S10(3) of the Trade Marks Act 1994. This was due to the reputation of Match’s trade marks and because a consumer would believe that Muzmatch was a sub-brand of Match.
The Court rejected Muzmatch’s defence of honest concurrent use and found that Match would also have an alternative claim in the tort of passing off.
Therefore, the Court found that there was likely to be confusion between Muzmatch and Match because of the distinctive nature of the term ‘Match’ in the world of dating platforms
- The Court found that a common descriptive element can acquire distinctiveness in an area, solely because of a company’s reputation and influence in that market.
Therefore, the Court found that there was likely to be confusion between Muzmatch and Match because of the amateurmatch search distinctive nature of the term ‘Match’ in the world of dating platforms
- The use of Search Engine Optimisation strategies can also constitute a trade mark infringement.
Therefore, the Court found that there was likely to be confusion between Muzmatch and Match because of the distinctive nature of the term ‘Match’ in the world of dating platforms
- The lack of the suffix ‘’ in a mark is not sufficient to distinguish use from a household brand such as Match, so care should be taken with brands such as ‘Match’, ‘Booking’
The opinions expressed in this update are those of the author(s) and do not necessarily reflect the views of the Firm, its clients, or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
