Case No. EWHC-941-(IPEC)

136.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.