Can ‘honest concurrent use’ offer a viable defence to a besieged brand?

Fladgate senior associate Ben Milloy examines the recent trademark tussle between dating apps Match and Muzmatch

Match Group, LLC & Ors v Muzmatch Ltd & Anor highlights issues with relying on the ‘honest concurrent use’ defence Shutterstock

The receipt of a credible trademark cease-and-desist letter is a bitter pill for any business, but can be even harder to swallow where trading under a particular brand has gone on for a number of years, generating hard-earned goodwill. While there are various means to undermine or defend against trademark infringement threats and claims, where there is confusion or deception in the marketplace, that can often spell the end; time to call in the marketing team and begin the (often painful and expensive) rebranding process.  

But what if there was something to be said for the fact that a threatened brand-owner has traded side-by-side with its competitor for so long? In English law, the doctrine of ‘honest concurrent use’ may offer a ray of hope, even in the face of consumer confusion. Where the doctrine applies, a court is able to find that there is no adverse effect on the function of the trademark being allegedly infringed. In other words, the contested trademark does not denote one party alone. This has been held in the past for brands like ‘Budweiser’, to which both Budejovicky Budvar np and Anheuser-Busch have laid claim.

The recent Court of Appeal judgment in Match Group, LLC & Ors v Muzmatch Ltd & Anor [2023] has provided clarification on the availability of this, sometimes elusive, quasi-defence. The case began when worldwide introduction and dating business Match Group sued Muslim-only dating app owners Muzmatch in England’s High Court for trademark infringement. The first instance judge found that Muzmatch’s use of ‘Match’ (among other marks) did infringe Match Group’s trademark rights. Muzmatch then appealed, chiefly on the basis that Match and Muzmatch had traded side-by-side for more than 10 and a half years by the time of trial in 2022.

In English law, the doctrine of ‘honest concurrent use’ may offer a ray of hope, even in the face of consumer confusion

The key questions for the Court of Appeal were (i) whether honest concurrent use was a stand-alone defence to infringement and (ii) at what, if any, point Muzmatch could rely on it, particularly given that the first instance court had found that Muzmatch’s use of the brand was infringing when it first began.    

The Court of Appeal found that honest concurrent use was not a separate defence, but a factor in the analysis of whether there had been infringement in the first place. Once a claimant had established a case of infringement on the face of it, the burden of proof then shifted onto the defendant to establish that, by virtue of its honest concurrent use, there had been no adverse effect on the functions of the trademark being infringed.

On the question of the ‘relevant date’, the Court of Appeal held that – while the general rule was that the relevant date to assess infringement is the date when the use of the sign complained of commenced, there might be a use which was initially infringing but which could eventually cease to be so. As such it was “not necessary for the use complained of to have started before the trademark was registered”.

Ultimately, the Court of Appeal held that the “length and scale of the of concurrent use [did not] compel the court to infer that most consumers have learnt the difference between the two marks”.

So where does this leave the unhappy cease-and-desist recipient? It seems that honest concurrent use is unlikely to ride to a defendant’s rescue unless there is a significant period of co-existence behind them (as a rule of thumb, think several decades, rather than mere years). Even then, its application will be highly fact-dependent. The sensible approach is therefore to conduct trademark clearance searches before adopting a brand in each new territory, as well as before expanding an existing brand into new product or service lines.

For those would be letter-writers, however, the potential application of the doctrine should not be dismissed too quickly. The fact that Muzmatch were able to take these questions to the Court of Appeal shows its flexible and uncertain nature. Whereas there is force in the suggestion that continuing what was initially a trademark infringement should not generally give rise to a defence over time (the first instance judge’s view), the Court of Appeal did not rule this out as a possibility. The Court of Appeal’s judgment concluded by referencing the adage that “like gardens, trademark cases always get worse with neglect”. The message to potential claimants who are considering taking enforcement action: don’t delay.

Ben Milloy is a senior associate specialising in IP protection issues at Top 100 UK law firm Fladgate LLP. 

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