Trademark Violation – Muslim Dating App Meets Its Match [.com]

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A recent ruling by the Intellectual Property Tribunal (IPEC) on April 20, 2022 decided that “Muzmatch”, an online matchmaking service for the Muslim community, infringed the trademarks of Match.com.

Nicholas Caddick QC’s decision was that Muzmatch’s use of signs and his name amounted to trademark infringement and/or imitation of Match.com’s marks. This case follows successful oppositions by Match.com to the registration of its trademarks by Muzmatch in 2018, and unsuccessful attempts by Match.com to purchase Muzmatch between 2017 and 2019.

Match.com is one of the largest and most recognizable dating platforms in the UK. It first registered a word mark “MATCH.COM” in 1996, and also owns other dating-related marks, including Tinder and Hinge, with other marks, including the word mark “TINDER”. Match.com used a 2012 TNS report to illustrate its goodwill and reputation and 70% of respondents would be able to remember Match.com if invited, 44% uninvited and 31% people would name Match.com as the #1 dating brand. the ‘top of their head.’

Muzmatch is a relatively niche but growing dating platform that aims to provide a halal (i.e. in accordance 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 around 666,069 registrations in the UK alone.

The Court considered that the marks “Muzmatch” and “MATCH.COM” and the graphic marks of each company showed a high degree of similarity in the services provided. The marks were also verbally and conceptually similar in nature and the addition of the ‘Muz’ prefix did not distinguish them, nor did the absence of the ‘.com’ suffix or stylistic fonts/devices.

The central issue in the case concerns the idea of ​​the term “Match” which is used by the two brands to describe the nature of the activity: match[ing]. Muzmatch argued that because both marks share this common descriptive element, it is difficult to conclude that there is a likelihood of confusion between the two marks, as the term simply describes what each company does.

The Court concluded that it is not impossible to conclude that there is a likelihood of confusion for a common descriptive element, because the descriptive element can be used in a distinct way. The average consumer would conclude that the “Match” part is the original insignia of Match.com because of its reputation as a brand and the very high degree of distinctiveness in the dating industry. An average consumer would have seen the word “Match” as the dominant element in the Match.com marks, and Match.com is often simply referred to as “Match” in advertisements.

Besides its brands, Muzmatch used a search engine optimization strategy from January 2012, in which it used a list of approximately 5000 keywords that would take a user to a landing page on its website. In the list of keywords used, Muzmatch used the words ‘muslim-tinder’, ‘tinder’ and ‘halal-tinder’ which were accepted by Muzmatch during the litigation for infringing Match’s trademarks of the Tinder trademark including the word mark ‘TINDER’. Muzmatch’s use of SEO has also been found to be confusing based on some of its keywords, including “UK Muslim Match”, which again uses the term Match distinctly. Therefore, a consumer may confuse a link to “UK Muslim Match” with “Match.com”.

Therefore, the Court considered that there was a risk of confusion between Muzmatch and Match.com due to the distinctive character of the term “Match” in the world of dating platforms. An average consumer would conclude that Muzmatch was materially related to the Match.com marks, as if it were directed to Muslim users as a sub-brand, so this confusion would constitute trademark infringement under S10(2) of the Trade Marks Act 1994.

The Court also held that Muzmatch had improperly taken advantage of Match.com’s marks and therefore infringed those marks under S10(3) of the Trade Marks Act 1994. This was due to the reputation of Match.com’s brands and because a consumer would believe that Muzmatch was a sub-brand of Match.com.

The Court rejected Muzmatch’s defense of honest concurrent use and found that Match.com would also have an alternative claim in the tort of deception.

Key points

  • The Court concluded that a common descriptive element can acquire distinctiveness in a field, solely because of a company’s reputation and influence in that market.
  • The use of search engine optimization strategies may also constitute trademark infringement.
  • The absence of the “.com” suffix in a mark is not sufficient to distinguish the use of a household mark such as Match.com, so care must be taken with marks such as “Match.com”, ” Booking.com »[1]

Source:

[1] Match Group, LLC, Meetic SAS, Match.Com International Limited v Muzmatch Limited, Shahzad Younas [2022] EWHC 941 (IPEC)

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