Case No. EWHC-941-(IPEC)

120.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.