Case No. EWHC-941-(IPEC)

88.Condition (vi) is the likelihood of confusion. Match’s case here is that Muzmatch’s Signs give rise to a likelihood of confusion because the use of the word “match” as part of the Muzmatch name and as part of some of its SEO keywords is likely to cause some members of the public to be confused into believing that Muzmatch’s services come from Match (as a sort of sub-brand of Match) or from an entity that was economically linked to Match. Further guidance from the cases89.In dealing with this issue in Specsavers, in addition to the guidance quoted at paragraph 80 above, Kitchin LJ noted, at [52(d)] and [87] respectively, that:a.The issue of the likelihood of confusion must “…normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make a comparison solely on the basis of the dominant elements”; andb.“In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context."90.Given Ms Bowhill’s argument that “match” is descriptive rather than distinctive, it is also worth noting the comments of Mr Daniel Alexander Q.C., sitting as a Deputy High Court Judge, in Planetart LLC v Photobox Ltd [2020] EWHC 713 at [26]-[29]. Planetart concerned a claim that the claimant’s registered trade mark for “FreePrints” was infringed by the defendant’s use of the sign “PHOTOBOX FREE PRINTS”. Under the heading “The significance of commonality of descriptive signs”, Mr Alexander said:“26 One aspect of the approach to determining whether there is a likelihood of confusion which is important to this case is the significance of the adoption of common descriptive elements. In Reed Executive Plc v Reed Business Information Ltd [2004] EWCA Civ 159 at [83]–[84] the Court of Appeal said:See also Elliott v LRC Products (O/255/13 at [57]) where the Appointed Person, Daniel Alexander QC, observed that consumers are less likely to think that two descriptive marks denote businesses that are connected with one another because a credible and dominant alternative explanation exists for the similarity in marks which has nothing to do with their denotation of a common trade source, namely that the similarity is attributable to their descriptiveness.27 The case law does not suggest that there are general rules as to how descriptiveness should be taken into account but it is clear that it should be done. The fact sensitivity of such is illustrated in a number of cases. For, example, one concerning registration of a figurative mark incorporating “VAPE & Co” for e-cigarettes which was opposed by the proprietor of a prior registration for a figurative mark including the words “The Vape Co” (Nicoventures Holdings Ltd v The London Vape Company Ltd [2017] EWHC 3393 (Ch)). Birss J said (see [31]–[36]):“The nature of the common elements needs to be considered and in a case like this, in which the common elements are elements which themselves are descriptive and non-distinctive it is necessary somewhere to focus on the impact of this aspect on the likelihood of confusion. As has been said already it does not preclude a likelihood of confusion but it does weigh against it. There may still be a likelihood of confusion having regard to the distinctiveness and visual impact of the other components and the overall impression but the matter needs to be addressed.”28 That approach drew on the analysis by Arnold J of the case law of the European courts in Whyte and Mackay v Origin [2015] EWHC 1271 (Ch) where he said at [44]:29 These cases show that there is no hard rule that use of a descriptive term cannot lead to a finding that there is confusion but they also show that such a case is harder to establish. It also has the impact of somewhat downgrading the significance of conceptual similarity in the evaluation of the likelihood of confusion at least in so far as the mark is descriptive of the goods and services in question.”91.As is clear from these comments, the fact that a claimant’s mark and a defendant’s sign share a common element that is descriptive may make it more difficult to conclude that there is a likelihood of confusion, but it does not make it impossible. Moreover, it seems to me that a finding of a likelihood of confusion may well be appropriate where the average consumer recognises that that common element, whilst capable of being used descriptively, is in fact being used distinctively as a badge of origin. The issue is highly fact sensitive and has to be assessed globally, taking into account all relevant factors, including the context in which the signs have been used.The present case92.In support of her argument that there was no likelihood of confusion, Ms Bowhill argued that the only similarity between Muzmatch’s signs and the Match Marks lies in the use of what she said was the “wholly descriptive” word “match” and she relied on the following three points of difference arising from the context of its use in this case, namely:a.That the Match Marks included additional elements not included in the Muzmatch Signs – i.e. the “.COM” element that was part of the Match.com Marks and the heart device that was part of the Match Device Mark;b.Conversely, that the Muzmatch Signs had additional elements that were not included in the Match Marks – i.e. “MUZ”, “muslim”, “UK”, “United Kingdom” and the butterfly device; andc.That there were “distinct differences between the services provided by the parties as a result of the targeting of either the Muslim community or the general public”.93.I have already rejected point (c) above (see paragraphs 74-75 above) and, for the following reasons, I have concluded that notwithstanding the other differences, there is a likelihood of confusion arising in respect of the use of the word “match” in the Muzmatch Signs:a.I am fully satisfied on the basis of the evidence summarised in paragraphs 24-41 above that, by 2011, the 1996 Match.com Mark had acquired a very substantial degree of distinctiveness and reputation as a brand, a badge of origin for Match’s online dating services. This is clear from the various branding and tracking reports. In my judgment, that distinctiveness and reputation also attached to the 2017 Match.com Mark from its filing date.b.The average consumer would have seen the word “match” as the dominant element in each of the Match Marks in the sense referred to by Kitchin LJ in Specsavers (see paragraph 80(e) and (f) above) and, whilst the average consumer would be aware of the “.com” element and, later, of the heart device as part of those Marks, they would not be particularly influenced by either of them (see paragraphs 86(b) and (d) above). Consistently with this, the evidence shows that, by April or May 2011, many people were referring to the business simply as “Match”, as can be seen from the branding and tracking reports, the responses of some people to the TOM awareness question posed for those reports and some of Match’s advertisements to which I have referred. Indeed, by 2011 Match was itself emphasising the “Match” element of its Mark (see paragraph 23 above). Another example of this can be seen on the page from the Match.com website dated 26 May 2010 which stated: “Are you looking for matchaffinity.com? A different kind of relationship service from match”. Whilst this is referring to Match Affinity, it is a page from the main Match.com website referring to another service available from Match and, more importantly for present purposes, referring to itself simply as “match”.c.In these circumstances, the average consumer, certainly by early 2011, would have been well aware that the word “match” in the context of on line dating services was capable of being used and was being used both descriptively and distinctively (the example I put to Mr Austen in argument being “I met my perfect match on Match”). The average consumer would be perfectly able to distinguish between such uses and would have been in no doubt that, in the context of the Match.com Marks, it was being used in a distinctive sense rather than descriptively. d.Muzmatch produced evidence of third parties using the word “match” in relation to dating services. In many of these instances, the word was plainly being used descriptively. In others, it was part of the name of the service provider but, with two exceptions, there is no evidence that these service providers were trading in 2011. The exceptions were “Senior Match” and “Millionaire Match”. The 2021 Google Play descriptions of the apps for these entities quote prices in pounds sterling and state that they started trading before 2011. However, this is all that I know about them. I know nothing about the scale of their operations and, in particular, whether they were operating in the UK under those names as at 2011 (I note that the “developer” was, in both cases, said to be in California). Mr Lubot’s evidence was that Match had been active in opposing or obtaining limitations of around 180 third party applications for trade marks that included the word “match” but none pre-dated 2011 and only 7 were from 2011 (Match being successful in each of these cases in preventing registration of the word “match” for dating services). It appears, therefore, that use of “match” in a distinctive sense was not widespread in around April 2011, save by Match.e.On this basis, I am satisfied that by early 2011 the average consumer would have associated distinctive uses of the word “match” in the context of on-line dating services with the services of Match, the Claimants. In my judgment, this would have been the case when the average consumer looked at the 1996 Match.com Mark and also, from its 13 January 2017 filing date, at the 2017 Match.com Mark, and also at the Match Device Mark when it started to be used in 2015. f.In relation to the Muzmatch logos, it is again clear that the word “match” was being used as part of the business name – i.e. in a distinctive rather than descriptive sense. Indeed, there is no evidence (as at 2011) of Muzmatch using the word descriptively in relation to its services (see paragraph 50 above).g.Although, in Muzmatch’s logos and its SEO keywords, the word “match” was accompanied by one or more of the additional elements of “muz”, “muslim”, “UK” “United Kingdom” or the butterfly device, for the reasons set out in paragraph 86(a) and (e) above, I do not see that this would significantly reduce the likelihood of confusion with the Match Marks.h.In the case of the SEO keywords, the use of the word “match” is less obviously distinctive and I can see that some users might have used the keywords containing the word “match” descriptively. For example, a search on “UK Muslim Match” may have been intended to find a match who was a Muslim in the UK. However, that same search may also have been made if the keyword was used being distinctively – by someone looking for a Muslim partner on Match. Indeed, the fact that such use could be distinctive is implicit in Muzmatch’s admission of liability with regard to its use of Tinder as an SEO keyword. i.On this basis, an average consumer carrying out a search using a keyword that included the word “match”, may well have been looking for Match and its services. However, as Ms Bowhill submits, the mere fact that Muzmatch used the word “match” as part of a keyword is not, of itself, actionable. Rather, as appears from Interflora Inc. v Marks & Spencer plc [2014] EWCA Civ 1403 at [155], the issue is whether what was produced as a result of a search carried out using that keyword was such that an average user could not have ascertained (or could only have ascertained with difficulty) whether what was produced originated from Match (or an undertaking economically connected with Match) or from a third party. j.In this regard, as Ms Bowhill points out, there is no evidence of what the search results themselves (i.e. the link) would have looked like when a user carried out a search using one of the relevant keywords. On this basis, she argues that the court is unable to determine whether those search results satisfied the Interflora test. In my judgment, it is likely that the results would have shown a link to the Muzmatch website and, therefore, to have featured the “muzmatch” name. If so, the average consumer would not have been able to ascertain (and certainly not without difficulty) that that link did not originate from Match (or an undertaking economically connected with Match) but, rather, from a third party. k.Even if I am wrong as regards the link, it is common ground that a user who clicked on that link would have been taken to the relevant landing page on the Muzmatch website. In such event, as appears from paragraph 60 above, a user who had searched on “UK Muslim Match” would have been taken to a landing page that used that search term in its title and in a further three places, including in the phrase “if you are looking for Uk Muslim Match then you have come to the right place.…”. The absence of the letter “a” before “Uk Muslim Match”, the capitalisation used in the above phrase, and the wording of this landing page as a whole, is more consistent with distinctive use than with descriptive use. In my judgment, it was liable to lead a user to believe that the landing page was connected with Match. Whilst the website itself was the Muzmatch website, I am satisfied for the reasons set out above that would not have dispelled the confusion and would not have made it clear to the user that the services on that website were actually being offered by a third party with no connection to Match. l.Finally, by reason of the matters set out in paragraphs 61-63 above, I find that a relatively substantial numbers of users would have seen the link and the relevant landing pages on the Muzmatch website (respectively, 32,770 and 11,725) and are likely to have been confused as a result.94.Taking the evidence as a whole and, in particular, the evidence of Match’s dominant presence in the market as at 2011 (and continuing thereafter), I find that the use of the Muzmatch Signs was likely to lead the average consumer in this case to conclude that Muzmatch was connected in some material way with the business that used the Match.com Marks and, after 3 March 2015, with the business that used the Match Device Mark. In particular, I find that the average consumer would have thought that Muzmatch was a sub-brand of that business specifically targeted at Muslim users and particularly at those Muslim users who felt that the services of a mainstream on-line dating service provider were not in accordance with Islamic values.95.In reaching this conclusion, I have taken into account the point made by Ms Bowhill that Muzmatch has been trading since 2011 and that, despite hugely extensive searches by the parties for the purposes of disclosure,10 Match has only been able to find three instances of what it says (but Muzmatch denies) was confusion. Ms Bowhill argues that, if there was a likelihood of confusion, then there would by now have been some credible evidence of actual confusion.96.In Jack Wills v House of Fraser [2014] ETMR 28 at [99], Arnold J said that: “… As I have said in a number of judgments, absence of evidence of actual confusion is not necessarily fatal to a claim under art.5(1)(b). The longer the use complained of has gone on in parallel with use of the trade mark without such evidence emerging, however, the more significant it is. Other relevant factors are the scale of the use complained of and the likelihood of actual confusion being detected.”97.Further guidance was provided in Fine & Country Ltd v Okotoks Ltd [2012] EWHC 2230 (Ch), (a passing off case) where, after stressing (at [83]) that the issue is one for the judge, Hildyard J stated that:“84 The courts recognise, however, that finding and producing actual evidence of confusion is difficult. Members of the public are reluctant to attend court. Moreover, people who are confused and deceived may remain confused and deceived, and there is no reason why this should come to the attention of the parties. Furthermore, members of the public who were once deceived, but then appreciate that they were misled, will frequently have no reason to draw this to the attention of the parties, especially if the realisation comes some time after any relevant dealing with the parties. Finally, persons may be deceived, and decide not to do business with the claimant as a result. They have therefore no reason to contact the parties and inform them of the confusion. For these reasons, evidence of actual confusion and deception is often decisive, but its absence is not. 85Thus, in Phones 4U at [45] Jacob LJ observed: “It should also be remembered here that it is seldom the case that all instances of deception come to light — the more perfect the deception the less likely that will be so.”86 More recently in Specsavers v. Asda Stores [2010] EWHC 2035 at first instance, Mann J said in relation to a defence based on absence of confusion: “First, Mr Purvis relied on a complete absence of complaints about confusion from Asda customers despite the 6 months that the logo had been present in the stores to the date of the trial. There was unchallenged evidence as to complaints procedures and handling, and none were recorded. I give this little weight. For this route to have yielded any relevant complaints there would have to have been customers who were confused, who then had their confusion removed, and who then felt sufficiently strongly about it to complain to Asda formally about it. This does not seem to me to be a likely scenario. I have difficulty in imagining how this can arise in practice.” 87 In Harrods v. Harrodian School Millett LJ said:“Evidence of actual confusion is always relevant and may be decisive. Absence of such evidence may often be readily explained and is rarely decisive. Its weight is a matter for the judge.” Kerr LJ (dissenting, but not on the approach to evidence of confusion) put the point this way: “Even if there is no evidence of confusion whatever, the court must decide for itself, and may conclude that passing-off has been established: see e.g. per Sir Raymond Evershed M.R. in Electrolux Ltd v. Electrix Ltd (1953) 71 R.P.C. 23 (CA) at p. 31. Thus, it has often been said that the availability of such evidence is important, but not its absence, because it is notoriously difficult to obtain such evidence.” ”98.It is, therefore, possible to conclude that there is a likelihood of confusion even in the absence of evidence of actual confusion. Indeed, as the passages quoted above show, the absence of evidence of confusion is “rarely decisive”. It is, as Hildyard J said in Fine & Country at [83], a matter for the trial judge to determine on the facts.99.In the present case, notwithstanding that Muzmatch has been trading since April 2011 (albeit not on a particularly large scale until after 2016), I find that the absence of evidence of actual confusion is not because there was no relevant confusion but rather reflects the fact that Match’s and Muzmatch’s services have been provided via their websites and, more recently, their apps. Where services are provided to a customer in that manner, then any other dealings with that customer are likely to be conducted via that same website or app and are likely to relate to the services that that customer had received via that website or app. On this basis, as Hildyard J noted in Fine & Country at [84]-[86] (see above), it is hard to see how or why any confusion that there might be in the customer’s mind would come to light. It would rarely be relevant to the customer’s issues – and that this is so even for those customers who use (as Ms Bowhill submitted was possible) two or three different on-line dating platforms. Given this, it seems to me that, despite the longer period of trading involved, this case falls squarely within the scope of what Mann J said in Specsavers as set out above. 100.In arguing that confusion would have come to light, Ms Bowhill pointed to Mr Younas’s evidence that Muzmatch had been contacted by customers of Minder (another provider of dating services) in relation to matters concerning Minder’s services. The difficulty with this is that I know nothing about Minder and its services, save that Mr Younas has said that it had copied a number of app features and it looked similar to the Muzmatch app. Otherwise, I have no evidence as to how Minder operated and I do not think that this evidence helps me in considering the likelihood of confusion arising from two businesses like Match and Muzmatch that are using similar names. The evidence of actual confusion 101.As mentioned above, Match seeks to rely on three instances of what it says is relevant confusion. As no witnesses were called to give evidence with regard to these instances, I do not place any great reliance on them. The most that can be said is that two of them provide some (albeit limited) support for Match’s argument that there is a likelihood of confusion. 102.The first instance is based on an email received by Match on 9 May 2021 from a person regarding “an account on muz match” which, that person said, was not his account but which had used his pictures. As Ms Bowhill points out, on its face, this may not be evidence of relevant confusion given that the person concerned claimed not to be a user of any dating websites. However, the fact that someone had contacted Match with a complaint regarding Muzmatch is evidence of some sort of a likelihood of confusion arising from the similarity in the names, although in the absence of more details, it is difficult to place too much reliance on this particular instance.103.The second instance is in a website chat in July 2018. This involved a person in the USA who appears to have been a customer of both Match and Muzmatch and who complained to Match about a $20 charge levied by Muzmatch. Ms Bowhill points out that it is not evidence of actual confusion in the UK. However, the fact that a customer made that mistake in the US shows that there is a likelihood of such confusion arising in similar circumstances in the UK. Again, in the absence of more details, it is difficult to place too much reliance on this.104.The final instance relied on by Match was in an email dated 3 January 2016 referring to a user having “met on a different match app previous to this”. In my judgment, this email is of little or no value given that it is wholly unclear from the context whether the reference to a “different match app” was being used distinctively or descriptively.