Case No. EWHC-941-(IPEC)

on s.10(2)105.For these reasons, I find that there is a likelihood of confusion as between the Muzmatch Signs and the Match Marks and, therefore, an infringement pursuant to s.10(2). Was there an infringement under s.10(3)106.I will now deal with Match’s claims under s.10(3). In doing so, I will assume (contrary to my conclusion above) that use of the Muzmatch Signs did not give rise to any likelihood of confusion with the Match Marks within the meaning of s.10(2).The law relating to infringement under s.10(3)107.As regards the test for infringement under s.10(3), in Comic Enterprises Kitchin LJ stated, at [111], that:“In Interflora this court explained (at [69]) that a proprietor of a registered trade mark alleging infringement under Article 5(2) must therefore show that the following requirements are satisfied: (i) the registered trade mark must have a reputation in the relevant territory; (ii) there must be use of a sign by a third party in the relevant territory; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor; (v) it must be of a sign which is identical with or similar to the trade mark; (vi) it must be in relation to goods or services; (vii) it must give rise to a link between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say, (a) detriment to the distinctive character of the trade mark, (b) detriment to the repute of the trade mark, or (c) unfair advantage being taken of the distinctive character or repute of the trade mark; and (ix) it must be without due cause.”108.In this case, there is no issue as regards requirements (ii), (iii), (iv) and (vi) referred to above. Muzmatch’s use of its Signs was clearly use within the relevant territory, in the course of trade, without Match’s consent and in relation to goods or services. The issues, therefore, are whether requirements (i), (v), (vii), (viii) and (ix) are satisfied. Requirement (i) - reputation109.In its Amended Defence, Muzmatch admits that the Match.com Marks (but not the word “match” by itself) have a reputation amongst members of the general public but not amongst members of the Muslim community. It also admits that the Match Device Mark has a minimal reputation but, again, not within the Muslim community.110.The task of showing that a mark has a reputation in the UK is not intended to be particularly onerous (see Red Bull v Sun Mark [2012 EWHC 1929 (Ch) at [90]) and, in my judgment, the evidence summarised in paragraphs 24-41 above, clearly establishes that by at 2011, the 1996 Match.com Mark had a very significant reputation in that it was clearly known by a very substantial part of the public concerned with such services and was, in fact, the dominant force in the market. Moreover, given that the evidence clearly shows that Match had Muslim customers, and that Mr Younas himself was well aware of the Match brand (despite not being a customer), I find that that reputation extended to people within the Muslim community. I am also satisfied that this reputation would also have attached to the later 2017 Match.com Mark upon it being registered.111.The position is different as regards the Match Device Mark. This had a filing date of 3 March 2015 and Ms Bowhill argued that as at that date it could have no acquired distinctiveness, but only its minimal inherent distinctiveness. I accept that I have to take this mark as it was as at its relevant date of 3 March 2015. However, as I have already found, by 2011 (and therefore as at 3 March 2015) the average consumer would have been aware that where the word “match” was used in a distinctive sense, it designated the services of Match, the Claimants (see paragraph 93(e) above). Of course, given Match’s dominant position in the market reflected in the levels of awareness summarised, its advertising and its social media following (see paragraphs 35-38 above), the Match Device Mark would rapidly have acquired its own distinctiveness and reputation in any event (including in the Muslim community) after 3 March 2015.Requirement (v) - similarity of sign/mark112.I have dealt with the level of similarity between the Match Marks and the Muzmatch Signs when dealing with Match’s s.10(2) claim. As set out there, I find that there is a medium degree of similarity. Requirement (vii) – a link113.There is an issue as to whether, in the mind of the average consumer, use of the Muzmatch Signs would give rise to a link between those Signs and any of the Match Marks. 114.As regards what constitutes a link for these purposes, it is clear from Specsavers ([2012] EWCA Civ 24) at [120]-[121] that what is required is a certain degree of similarity between the Marks and the Signs such that the average consumer would make a connection between them. It is not necessary that the average consumer would be confused. It is simply that, taken in context, the sign would call the registered mark to that person’s mind.115.Although I am considering the application of s.10(3) on the assumption that I was wrong to conclude that there was a likelihood of confusion, the factors that led me to reach that conclusion would, in my judgment, establish a link in the mind of the average consumer as between the Muzmatch Signs and the Match Marks. In summary, by 2011 the 1996 Match.com Mark had established a very significant reputation in the market (which was also enjoyed by the 2017 Match.com Mark from its filing date), there is medium level of similarity between the Match.com Marks and the Muzmatch Signs, and there is either an identity or a reasonably high level of similarity between the parties’ goods/services. As the use made of the Muzmatch Signs was clearly use intended to be distinctive (as a brand) rather than descriptive, I am satisfied that the average consumer would have made a link between those Signs and the Match.com Marks. I am aware that the evidence of Mr Younas and Mr Craig was that the Signs did not create any link in their minds. However, in this respect, I do not think that their views are representative of those of the average consumer.116.The position as regards the Match Device Mark is, again, slightly different given that it had no acquired distinctiveness in itself as at its relevant date of 3 March 2015. Nevertheless, for the reasons set out above, I find that the average consumer (being aware of the extensive use made by the Claimants of the name “Match”) would have made a link between the Muzmatch Signs and this Mark as well.117.I also note that the likelihood that users would make a link between Muzmatch’s keywords and the Match Marks is clear from the fact that Muzmatch’s SEO strategy involved the use of the names of other dating service providers including, as from 2015, of the name Tinder (see paragraphs 58 and 59 above). The SEO strategy of using such keywords relied on the fact that users would make a link between those keywords and those service providers.Requirement (viii) – the three types of injury118.Under s.10(3) liability can arise in respect of any of three types of injury - (a) detriment to the distinctive character of the mark (often called “dilution”), (b) detriment to the repute of the mark (“tarnishment”) and (c) unfair advantage being taken of the distinctive character or repute of the mark (“free-riding”). 119.Match’s claim in this regard was focussed primarily on injury within (a) and (c) above. Whilst type (b) injury (damage to repute or tarnishment) was relied on in Match’s Particulars of Claim, it was barely mentioned by Mr Austen in his submissions and, in my judgment, rightly so. I have been shown no evidence that Muzmatch’s use of its Signs is liable to tarnish the image of the Match Marks in the way envisaged by cases such as L'Oreal v Bellure NV Case C-487/07 at [40]. Requirement (viii) – unfair advantage120.Turning then to Match’s claim based on type (c) injury (namely that Muzmatch Signs took unfair advantage of the distinctive character or repute of the Match Marks), the following principles appear from the authorities: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].121.In my judgment, applying these principles, I am satisfied that even in the absence of a likelihood of confusion, the Muzmatch Signs take unfair advantage of the distinctive character or repute of the Match.com Marks. As set out above, even by 2011, the 1996 Match.com Mark had a very strong reputation (which was also enjoyed by the 2017 Match.com mark from its filing date), including amongst members of the Muslim community. Match had invested very substantial sums in order to build that reputation and, as Mr Lubot stated, to build trust in its platform and to reduce any stigma that might attach to the use of online dating services. By using the name “muzmatch” in a way that created a link to the Match.com Marks (and particularly to do so in relation to identical or, at least, highly similar goods or services), Muzmatch was, in effect, taking some of the benefit of that reputation and of that investment and was doing so without paying for it.122.The case is less clear as regards the Match Device Mark given that that Mark in itself had no enhanced distinctiveness as at its relevant date of 3 March 2015. Nevertheless, I find that by reason of Match’s activities, the word “Match” (which formed the dominant part of this Mark) was a word which the average consumer would have associated with the business of the Claimants (see paragraph 93(a)-(e) above) and, therefore, that the use of the word Muzmatch also took unfair advantage of the distinctive character or repute of this Mark.123.In reaching these conclusions, I have taken into account Mr Younas’ evidence that in 2011, when he chose the name Muzmatch, it was not his intention to make a link to or take any benefit from the 1996 Match.com Mark. Indeed, I note that (as mentioned above) he did not use the word “match” by itself or “Match.com” as SEO keywords. However, I do not see that this assists Muzmatch. As I understand it, Mr Younas’ state of mind was based on his belief that the word “match” was descriptive. In my judgment, for the reasons I have already set out, whatever Mr Younas’ subjective intention or belief, the average consumer (including some who were Muslims) would not have seen the relevant use of the word “match” by either Match or Muzmatch as being descriptive and would instead have made a link between the Muzmatch Signs and the Match Marks. The objective effect, therefore, of the use of the Muzmatch Signs was that Muzmatch benefitted from the reputation of the Match Marks.124.Moreover, objectively viewed, the intention to benefit from the reputation of the Match Marks is clear from Muzmatch’s SEO strategy. If there was no benefit to Muzmatch, it is hard to see why it would have used keywords including the word Match in a way that could be distinctive (see paragraph 93(k) above) along with the names of other dating service providers including, from 2015, the name Tinder (see, again, paragraphs 58 and 59 above). In my judgment, that was taking unfair advantage. 125.I should also note that, given that Mr Younas was prepared to use the name Tinder as part of Muzmatch’s SEO strategy, it is hard to accept his claim that the creation of a link with Match would have been detrimental to Muzmatch. Tinder’s services, being more clearly focussed on forming casual relationships, are likely to be more objectionable to traditional Islamic values than Match’s services. Yet Muzmatch was perfectly prepared to use the Tinder name. Indeed, in addition to its use as part of an SEO keyword, I have seen marketing material from Muzmatch describing itself as “Way more than just a ‘Muslim tinder” and interviews given by Mr Younas in which he said “I took what was good from Tinder”. 126.In arguing that it had not intended to take unfair advantage, Muzmatch also placed some reliance on the fact that, after 2016, there had been discussions between Match and Muzmatch (see paragraph 64 above). I cannot see how this assists Muzmatch. The negotiations started with Match’s letter alleging that Muzmatch’s actions infringed the Match Marks and that was still Match’s position in 2018 when it successfully opposed Muzmatch’s applications to register the Muzmatch name as a trade mark (see paragraph 65 above). Muzmatch may have hoped that the negotiations would lead to a favourable result that would allow it to continue using the Muzmatch name, but I cannot see how this could convert the unfair advantage that Muzmatch had taken of the Match Marks into a fair advantage.127.For these reasons, I also reject Ms Bowhill’s argument that Match’s decision to rebrand Harmonica as Hawaya (rather than as a sub-brand of Match) shows that there could be no benefit to Muzmatch in creating a link in people’s minds with Match. 128.An argument raised by Mr Austen was that the conclusion that Muzmatch had taken unfair advantage of the distinctive character or repute of the Match Marks was supported by the style and colours which Muzmatch used for its branding. These, he said, were initially very close to and, thereafter, tended to follow Match’s branding. As set out above, Mr Younas admits that he was aware of Match and I can see that it is likely that he kept Match’s branding in mind. However, I am not convinced that this provides Match with much real assistance. As appears from Planetart at [38], the concept of unfair advantage under s.10(3) does not seek to prevent a business learning from its competitors, even to the extent of (to use the words of Mr Alexander Q.C. in Planetart) “adopting similarities in approach and presentation”. On the facts, I do not think that the evidence shows a general tendency by Muzmatch to follow or to ape Match’s branding beyond its use of the Match name. Mr Younas gave detailed evidence of how Muzmatch’s branding was chosen and evolved and, in the context of on-line dating services, I do not regard it as particularly significant that there are similarities in the use of lower case lettering, or of a heart device, or that Muzmatch (for a very short time in respect of an app to be used on smaller mobile devices) used the single letter “M” with a heart device. In other respects, Muzmatch did not follow Match’s branding. Requirement (viii) – detriment to distinctive character129.The other type of injury relied on by Match was detriment to the distinctive character of the Match Marks.130.In L’Oreal at [39] the CJEU provided the following guidance as regards this aspect of s.10(3): “39. As regards detriment to the distinctive character of the mark, also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’, such detriment is caused when that mark’s ability to identify the goods or services for which it is registered is weakened, since use of an identical or similar sign by a third party leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is particularly the case when the mark, which at one time aroused immediate association with the goods or services for which it is registered, is no longer capable of doing so (see, to that effect, Intel Corporation, para.29).131.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].132.On the assumption on which I am currently proceeding (i.e. that there is no likelihood of confusion) and in the absence of any evidence to establish any other form of damage to the distinctive character or reputation of the Match Marks, I have concluded that Match’s claim in this regard must fail. On this assumption, there is no evidence that use of the Muzmatch Signs has led (or is likely to lead) to any change in the economic behaviour of the average consumer. Requirement (ix) – without due cause133.The final condition in relation to a potential liability under s.10(3) is whether Muzmatch’s use of its Signs was without due cause. 134.In Planetart, Mr Alexander Q.C. noted (at [40]) that the onus of proof is on the defendant to show that it did have due cause. He then went on at [42]-[45] to make the following points regarding the issue of due cause:“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.”135.It seems to me that, in a case such as the present, the factors to be considered in relation to the issues of unfair advantage and of due cause are much the same. On this basis, given my finding that Muzmatch had taken unfair advantage of the distinctive character or reputation of the Match Marks and given that Match is not seeking to prevent descriptive uses of the word “match”, then Muzmatch has not established that its conduct was with due cause. Honest concurrent user136.I turn now to deal with Ms Bowhill’s argument that this is a case of honest concurrent use by Muzmatch of the marks in question. 137.The concept of honest concurrent user has its roots in s.12(2) of the Trade Marks Act 1938 and was carried into s.7 of the Trade Marks Act 1994. These provided that a trader who could establish honest concurrent use of a mark might be entitled to register that mark notwithstanding the existence of another trader with earlier rights in that mark. Save for this, the concept is not something that is, expressly at least, recognised in any UK or European trade mark legislation.138.Despite this, as explained in cases such as Budějovický Budvar, národní podnik v Anheuser-Busch, Inc C- 482/09, [2009] EWCA Civ 1022 and [2012] EWCA Civ 880 and IPC v Media 10 [2014] EWCA Civ 1439, the concept reflects the fact that where two parties have been trading for a sufficiently long period using the same mark, that mark may have come to indicate the goods or services of either of those parties. In effect, the mark may no longer fulfil (as least as between those parties) the essential function of a trade mark: namely acting as a badge of origin for the goods or services of just one of them. In such a case, a party may be entitled to register the mark notwithstanding that the other party had also used the mark (as in Budweiser) or it may be able to defend an infringement claim brought by that other party (as in IPC v Media 10). Further, it is clear from cases such as Victoria Plumb Ltd v Victorian Plumbing Ltd [2016] EWHC 2911 that the concept can apply not just where the marks used by the parties were identical but also where they were similar and, therefore, can apply to infringement cases brought under s.10(2) and 10(3) of the Trade Marks Act 1994 as well as to those brought under s.10(1). In such infringement cases, it is not that honest concurrent user is a specific defence; rather, it is that where there has been honest concurrent use, the conditions for infringement are unlikely to be satisfied (see the suggestion made by Arnold J, in relation to s.10(2), in W3 Ltd v Easygroup Ltd [2018] EWHC 7 at [287]). 139.As explained by Jacob LJ in Budweiser, 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 although, as explained by Henry Carr J in Victoria Plumb at [74] and [79], neither party should do anything to exacerbate the confusion beyond that which is inevitable. 140.Ms Bowhill argues that the present case is a strong case of honest concurrent use. She points to the fact that Match and Muzmatch have coexisted for over ten years in the same field and that, as a result, the public has been educated that the marks do not indicate the services of just one of them. The guarantee given by the marks is, she submits, different. I do not accept this argument. 141.In cases like Budweiser and the other honest concurrent user cases relied on by Ms Bowhill, 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 sued on 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, had given rise to a likelihood of confusion and/or had taken unfair advantage of the reputation of that Mark. Moreover, given the 26th January 2016 letter and Match’s (successful) opposition to the registration of the Muzmatch name as an EU and a UK trade mark (see paragraphs 64-65 above), Muzmatch was well aware that Match regarded the Muzmatch Signs as infringing. In the absence of, say, estoppel or statutory acquiescence, it is difficult to see how use that starts as infringing use can be turned into honest use by the fact that it has continued. The very reason why use infringes is because, if left unchecked, its effect would be to educate the public that the mark does not indicate the services of the trade mark proprietor. It must be a very unusual case where (again, in the absence of estoppel or statutory acquiescence) a defendant can argue that continuing to infringe gives rise to a defence to an infringement claim. I do not think that this is such a case and, in my judgment, Muzmatch’s use cannot be regarded as honest concurrent use. Whilst I accept that Mr Younas did not intend to create a link to or confusion with the Match Marks (because he wrongly saw use of the word “match” as descriptive in this context and because he was serving only the Muslim community), I do not see that this can give rise to a defence when, objectively viewed, his actions infringed Match’s rights for the reasons set out above. 142.It seems to me that Ms Bowhill’s argument is really seeking to take the concept of honest concurrent user into the sphere of acquiescence or estoppel or even of limitation (none of which features in the list of issues for this case). There is an element of this in Ms Bowhill’s submission that Mr Younas relied on representations made by Match during the settlement discussions to the effect that their concern was not use of the name Muzmatch per se, but rather, the format and style used. Ms Bowhill (rightly, in view of the matters mentioned in the previous paragraph) does not argue that this gives rise to any estoppel but simply relies on it to support her claim that Muzmatch was acting honestly. However, I cannot see that this assists Muzmatch. As I have already found, Muzmatch’s mistaken views as to the legal basis of its actions cannot transform what were infringing acts into non-infringing acts.Passing off143.I turn, finally, to the issue of passing off. The basic principles of law are well established. To succeed, Match must establish that it has relevant goodwill and that there has been a misrepresentation by Muzmatch which has caused damage to Match’s goodwill.144.Dealing first with the issue of goodwill, Mr Austen’s argument is that by 2011 Match had acquired goodwill not only in Match.com but also in the word “Match” when used distinctively. For the reasons set out in paragraphs 24-41, in paragraph 93(a)-(e) and in paragraphs 110-111 above, I accept this argument. I find that by 2011, the 1996 Match.com Mark had acquired a substantial goodwill and that that goodwill also attached to the 2017 Match.com Mark as from its filing date of 13 January 2017. I also find that significant goodwill would have attached to the Match Device Mark soon after its filing date of 3 March 2015 given the use that was then made of it (as evidenced in, for example, the March 2016 branding report). I am also satisfied that, by 2011, Match had also acquired significant goodwill in the word “match” by itself, when used distinctively (i.e. as part of a brand) in relation to online dating services in that, by that time, such use would have been seen as indicating that the relevant goods or services emanated from the Claimants, Match. Finally, I am also satisfied that, whilst Match’s services were not specifically targeted at people in the Muslim community, its goodwill in the Match Marks and in the word Match extended into that community (see paragraphs 75 and 110 above).145.As to misrepresentation, for the reasons set out above in relation to the issue of a likelihood of confusion (see paragraphs 93–104 above), I am 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. In my judgment, given the likelihood of confusion, damage would be caused to Match’s goodwill.146.For the reasons I have already given, it does not seem to me that Muzmatch can raise a defence based on the concept of honest concurrent use. Accordingly, in my judgment, Match’s passing off claim succeeds.Conclusion 147.For these reasons, I find that Muzmatch, by its use of the Muzmatch Signs, has infringed Match’s Marks and/or that such use amounts to passing off.