Match Group, LLC v Muzmatch Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Arnold,Lord Justice Nugee |
| Judgment Date | 27 April 2023 |
| Neutral Citation | [2023] EWCA Civ 454 |
| Docket Number | Case No: CA-2022-001355 |
| Court | Court of Appeal (Civil Division) |
[2023] EWCA Civ 454
THE LORD CHIEF JUSTICE OF ENGLAND AND WALES
Lord Justice Arnold
and
Lord Justice Nugee
Case No: CA-2022-001355
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE, BUSINESS AND PROPERTY
COURTS OF ENGLAND AND WALES, INTELLECTUAL PROPERTY LIST (ChD),
INTELLECTUAL PROPERTY ENTERPRISE COURT
Nicholas Caddick KC sitting as a Deputy High Court Judge
[2022] EWHC 941 (IPEC)
Royal Courts of Justice
Strand, London, WC2A 2LL
Jessie Bowhill (instructed by Bristows LLP) for the Appellants
Tim Austen (instructed by Browne Jacobson LLP) for the Respondents
Hearing date: 22 March 2023
Approved Judgment
Introduction
This is a trade mark dispute about the use of the words MATCH and MUZMATCH in relation to online introduction and dating services. The Claimants are members of a group of companies which provide such services worldwide, including in the UK, to consumers of all religions and none. The Claimants are the proprietors of two European Union trade mark registrations for MATCH.COM and a UK trade mark registration for “match” in a lower case font together with a small heart device (“the Trade Marks”). The First Defendant (“Muzmatch”) provides online introduction (or “matchmaking”) services to Muslims in the UK. The Second Defendant (“Mr Younas”) is the founder of Muzmatch's business and its chief executive officer. The Claimants contend that Muzmatch has infringed the Trade Marks and committed passing off through the use of the word MUZMATCH, various logos incorporating the word MUZMATCH and certain phrases that included the word “match” which were used by Muzmatch for search engine optimisation (“SEO”) purposes; and that Mr Younas is jointly liable for such acts. The Defendants deny infringement and passing off, but have not challenged the validity of the Trade Marks.
In addition to the claims outlined above, the Claimants claimed that the Defendants had infringed an EU trade mark registration for the word TINDER and a UK trade mark registration for a slightly stylised version of that word (“the Tinder Marks”) through the use of phrases including the word “tinder” for SEO purposes. The Defendants submitted to judgment in respect of that claim. The Claimants nevertheless seek to rely upon those acts as being relevant to the claims in dispute.
Nicholas Caddick KC sitting as a Deputy High Court Judge in the Intellectual Property Enterprise Court held for the reasons given in a careful and detailed judgment dated 20 April 2022 [2022] EWHC 941 (IPEC) that the Defendants had infringed the Trade Marks and committed passing off. I granted the Defendants permission to appeal on certain grounds, but not others.
The Trade Marks
The Trade Marks are as follows:
i) EU Trade Mark No. 182253 MATCH.COM registered as of 1 April 1996 in respect of “information and consultancy services in the nature and field of online dating and introduction services” in Class 42.
ii) EU Trade Mark No. 16246639 MATCH.COM registered as of 13 January 2017 in respect of inter alia “downloadable software in the nature of a mobile application for internet-based dating and introduction” in Class 9, “providing a website featuring technology in the field of social media, namely, a website that enables users to send status updates to subscribers of web feeds, upload and download electronic files to share with others” in Class 42 and “dating services; internet based social networking, introduction and dating services” in Class 45.
iii) UK Trade Mark No. 3097217 shown below registered as of 3 March 2015 in respect of inter alia “providing social introduction and date-arranging services” and “dating agency services; matchmaking services; computer dating services; provision of dating agency services via the Internet” in Class 45.
The present claims were initiated by a claim form issued on 30 July 2020, after the United Kingdom had ceased to be a Member State of the European Union, but before that withdrawal became fully effective on 31 December 2020. Since 31 December 2020, the two EU Trade Marks have been replaced, so far as the UK is concerned, by two comparable UK registrations. As explained in more detail below, the infringing acts complained of commenced long before 31 December 2020 and continued afterwards. Neither side suggests that either the change in the registrations which occurred on that date, or the consequential change in the legal basis for the Claimants' infringement claims in so far as based upon the EU registrations, is material to the issues before the judge or on appeal. Accordingly, this can be ignored.
The factual background
The factual background to the dispute may be summarised as follows.
The Claimants' predecessor in business started providing online introduction and dating services in the USA via a website located at www.match.com in about 1995. These services were (and remain) principally aimed at people who are looking to find another person with whom they can build a long-term relationship, including marriage. The services were launched in the UK in 2001. The European, including UK, business was acquired by the Second Claimant in 2009. The Claimants created a Twitter handle in January 2009, a YouTube channel in December 2009 and a Facebook page in March 2010. In 2010 the Claimants launched an alternative service known as Match Affinity. In July 2011 the Claimants launched an app, that is to say, software downloadable to a mobile phone or device to enable users to access the Claimants' services via mobile telecommunications networks connected to the internet. In July 2017 the Second Claimant acquired Tinder, which remains a separate business.
The judge described the evolution of the logos used by the Claimants on their website and app in his judgment at [16]–[23]. The Claimants adopted the device which forms the UK Trade Mark as a logo on the website in 2015. Throughout the Claimants' trading in the UK, the branding of their services generally involved some level of emphasis on the MATCH element of the Trade Marks by way of placement, size, colour, or emboldening of the word MATCH or by it being the sole word used to identify the Claimants as the source of the services.
The Claimants advertised and promoted their services by television advertisements, radio advertisements, newspaper advertisements, posters, magazine inserts, PR, social media and online advertising. The Claimants spent substantial sums on these efforts, for example just under £5 million on TV advertising alone in 2010. The Claimants succeeded in creating a high level of awareness for the MATCH brand. For example, a brand monitoring survey commissioned from the well-known market research company TNS found that in 2009 “Match.com” had a “top of mind” awareness score of 28%, a spontaneous awareness of 37% and an aided awareness of 65%, far ahead of any of its competitors. Later years' reports referred to the brand as “Match” interchangeably with “Match.com”. By 2014 the figures had increased to 47%, 71% and 87%. There were 342,086 UK visitors to the Claimants' website in May 2011, and the Claimants had around 129,000 subscribers and sales of more than €29m in 2011. By the end of January 2012 the YouTube channel had had over 500,000 views.
In around April or May 2011 Mr Younas set up a business under the name Muzmatch with the aim of providing online matchmaking services to the Muslim community in the UK. Mr Younas was (and remains) a practising Muslim. He wanted to provide a service that would allow Muslims to find a marriage partner in a way that was compatible with Islamic values. His concern was that, for many Muslims, the only way to meet a marriage partner was through family contacts or intermediaries, a process which many Muslims found awkward and outdated. Whilst introduction websites were becoming popular with some Muslims, many other Muslims disapproved of them, and in particular of the more “mainstream Western” websites, because they were perceived to promote casual relationships rather than focussing on finding a marriage partner. As a result, Mr Younas decided to set up Muzmatch to provide Muslims with the opportunity to find marriage partners using the more modern means of a website, but one which specifically sought to be compatible with Islamic values.
To this end, Mr Younas created a pay-as-you-go website with features designed to weed out users who were not serious in their search for a Muslim marriage partner. He registered “muzmatch.com” as a domain name in April 2011 and launched the website in May 2011. Mr Younas did this in his spare time away from his main job as a Vice President of the Institutional Equities Division of Morgan Stanley. Initially, he operated the business as a sole trader, but at the end of 2014 he left Morgan Stanley and in January 2015 he set up Muzmatch to take over the business. In about March 2015 Muzmatch launched an app. Thereafter the website was retained to promote Muzmatch's services, but visitors to it were directed to the app. The app has various features designed to ensure that users respect Islamic values. Until around March 2017 the app was free to use, but gradually paid-for features were introduced, including a premium monthly subscription service. Muzmatch's focus continued to be to provide a service targeted at Muslims seeking a marriage partner. Thus its app was described on the Apple App Store as “Muzmatch: Single Muslim dating; Halal, Arab & Muslim marriage” and on the Google App Store as “Muzmatch: Muslim & Arab Singles, Marriage & Dating”.
Mr Younas and Geoffrey Craig, another senior employee of Morgan Stanley who had no role or interest in the...
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