Match Group, LLC v MuzMatch Ltd [2023] EWCA Civ 454

The Court of Appeal has upheld Match Group’s (the “Claimants”) action for trade mark infringement and passing off against MuzMatch (the “Defendants”) in relation to the use of the word “match” for dating services. Importantly, LJ Arnold upheld Nicholas Caddick Q.C.’s ruling that the defence of honest concurrent use was not available to the Defendants – which will be the focus of this blog.

Honest concurrent use occurs where two parties have been trading for a long period, using the same mark (i.e., Match), which can then result in that mark indicating the goods or services of either of the parties.

IPEC Decision

In the first instance decision, the Claimant brought a claim for trade mark infringement based on section 10(2) and 10(3) of the Trade Marks Act 1994 (“TMA”).

The Defendants argued that as they had been operating with the Claimant in the same space for over 10 years, they could rely on ‘honest concurrent use’ as a defence.

Nicholas Caddick Q.C referenced the Budweiser[1] case, to namely set out that any use of a trade mark that starts as infringing use, cannot then be turned into honest use by virtue of it being continued.

Nicholas Caddick Q.C also made clear that honest concurrent use is not a stand-alone defence, but rather is only a factor to be considered in the infringement analysis in relation to section 10 (1), (2) and (3) claims of the TMA.

Court of Appeal

LJ Arnold upheld that honest concurrent use is not a stand-alone defence to infringement, as there is no statutory basis for the defence under UK or EU law.

Further, LJ Arnold held that honest concurrent use is only a factor to be considered in the trade mark infringement analysis. It follows that once a claimant has established a case of infringement, the burden will shift to the defendant to establish that, by virtue of its honest concurrent use, there can be no adverse effect on the trade mark i.e., in a section 10 (2) claim to show that there would be no likelihood of confusion.

Interestingly, LJ Arnold outlined that in rare cases, if the trade mark proprietor takes no action against infringing trade mark acts, the infringing mark could become non-infringing if it developed goodwill through parallel trade and that those consumers recognised the signs as having different trade origins.

Briffa comment

The case is interesting from a legal perspective, as it makes clear that use of a mark that is initially infringing could become non-infringing due to honest concurrent use. As quoted by LJ Arnold “Like gardens trade mark cases always get worse with neglect”. This serves as a warning to trade mark holders that they cannot acquiesce in infringing conduct.

The litigation landscape for trade marks is rapidly evolving and is one that Briffa is well placed to assist with, having assisted clients in the trade mark litigation space for over 25 years.

[1] Budějovický Budvar, národní podnik v Anheuser-Busch, Inc., Case C-482/09