For many people, finding love starts with a dating app. More than 10% of UK adults that use the internet participate in online dating[1].
Online dating is big business and brand strategy is a key aspect of obtaining a share of this lucrative market. For example, Bumble used an empowerment and female-first approach to help develop its market share. The name of a dating app is also important, and many of the most popular will likely immediately come to mind, such as Hinge, Plenty of Fish and Tinder.
Given the value of branding, brand protection is a vital component of protecting a business’ investment as well as its reputation and market share. These were all issues in the dispute that recently concluded in the Court of Appeal between a dominant player in the online dating market, Match Group LLC (Match) and Muzmatch, a disruptive innovator.
Match
Match is regarded as the pioneer of online dating services which it has been offering since the mid-90s. It is aimed at people wanting to build long-term relationships, including marriage. Match launched its business in the USA in 1995 via the website, www.match.com.
Match applied for a trade mark for MATCH.COM in the UK in 1996 and went on to launch its service in the UK in 2001. Since then, Match has operated in the UK under various branding, all incorporating the word MATCH.
Muzmatch
Muzmatch is an online dating service that was launched in the UK in 2011 by a former Morgan Stanley banker, Shahzad Younas. Mr Younas wished to provide a service for Muslims to find a marriage partners with Islamic values. Muzmatch grew from being promoted at mosques in London and Manchester to becoming the world’s largest Muslim dating and marriage app.
Match’s claim in the Intellectual Property Enterprise Court (IPEC)[2]
In 2020, Match sued Muzmatch for trade mark infringement alleging that Muzmatch was infringing its registered trade marks by using the word MATCH for online introduction and dating services.
Trade mark infringement can occur if a business uses a mark that is identical or similar to a registered trade mark without consent. Infringement occurs if the use of a name or logo gives rise to a likelihood of confusion in the marketplace or if the use takes unfair advantage or, or is detrimental to, the distinctive character or repute of the trade mark. A business seeking to free-ride on the reputation of an establish brand may be ordered to rebrand and pay damages or account for profits arising from the unauthorised use of the registered trade mark.
Match and Muzmatch may not have ended up in the High Court if the early stages of their relationship went differently. Match became aware of Muzmatch in 2016 and, in 2017, discussions commenced between the parties for the proposed acquisition of Muzmatch by Match. Match made 4 offers for Muzmatch. It has been reported that Mr Younas rejected an offer of $35bn because he considered that it did not meet the value of the business and that he was not sure that Match was an appropriate partner for Muzmatch.
Ultimately, discussions between Match and Muzmatch ended in early 2019 and Match issued court proceedings in 2020.
In 2022, IPEC held that Muzmatch had indeed infringed Match’s registered trade marks. The Judge held that Match, through its use of MATCH.COM, had acquired a high degree of distinctiveness and MATCH was the dominant element of that mark. The average consumer would be confused into thinking that Muzmatch was a sub-brand of Match’s business, and assume that the two dating services were connected. The Judge further held that Muzmatch could not rely on a defence of “honest concurrent use” to defeat the claim of trade mark infringement.
Muzmatch’s appeal[3]
Muzmatch appealed the judgment of the IPEC arguing that the Judge was wrong to dismiss a defence of “honest concurrent use”. Broadly, this means that if two parties have been using similar trademarks concurrently for some time, without there being any adverse effect on the registered trade mark, there is no infringement, and the marks may coexist peacefully. In a careful judgment, the Court of Appeal ultimately rejected the appeal and upheld IPEC’s decision that Muzmatch infringed Match’s registered trade marks.
A lesson in love
Following IPEC’s decision, Muzmatch rebranded to Muzz and continues to trade under that name. Mr Younas has said that Muzz’s dispute with Match had cost the business nearly $2m in costs and damages.
Though a bitter and expensive dispute between two players in the online dating market, Match and Muzmatch offers a lesson for businesses in all markets. It emphasises the importance of brand clearance searches before adopting a new brand in order to see if a brand is free to use. It will help identify the risk associated with a prospective new brand and, if clear, it should give confidence that a brand can be adopted freely, without the risk of action about its use.
Our experienced intellectual property team will be glad to assist in clearance searches, if you are accused of trade mark infringement, or if you are concerned that someone else is using a brand that is identical or similar to yours and you wish to understand whether you can stop that.
[1] Ofcom, One Nation – report for 2023
[2] [2022] EWHC 941 (IPEC)
[3] [2023] EWCA Civ 454
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