How to Decide If A Name Is Too Risky For Your Business
Match Group successfully challenged the Muslim dating app, Muzmatch’s, trade mark registrations in the EU and the U.K. And in the latest development of the dispute the High Court ruled that Muzmatch has unfairly benefited from Match Group’s reputation and investment in its brand and was riding on Match Group’s coattails for undeserved gain.
The dispute with Match has cost the founder, Shahzad Younas, an investment banker, over £1,000,000 to date. Yet, Mr Shahzad intends to appeal the court’s decision that Muzmatch is free riding on Match’s trade mark rights, by, among other things, referring to itself as the “Muslim Tinder”.
According to The Guardian, Mr Shahzad set up Muzmatch as a side business in 2011. The app now has around 650,000 sign-ups in the UK alone, and 6 million users worldwide.
Match established to the satisfaction of the High Court that Muzmatch, which used “match” and “Tinder” in its website metadata as well as in keyword tags such as “match-muslim” and “uk-muslim-match” to drive internet traffic to its platform was likely confusing consumers to believe the links refer to the Match Group.
The founder of Muzmatch, Shahzad Younas explained that he chose the Muzmatch name as a play on “Muslim” and “match”. He argued that Match was seeking to monopolize an ordinary descriptive word which is commonly used by consumers and traders, and that both marks merely share this descriptive common element to describe what each business does.
The court did not accept Muzmatch’s argument that the addition of the prefix ‘Muz’ or the lack of the suffix ‘.com’ or stylistic fonts/devices distinguished the two mark such as to enable them to co-exist. The court said that ‘Match’ is distinctive in the world of dating platforms. It is therefore not a descriptive term available to all others to use. The average consumer would conclude that the ‘Match’ element in the name is Match’s badge of origin due to the reputation and very substantial degree of distinctiveness Match enjoys in the dating industry.
Consumers would likely see the word ‘Match’ as the dominant element so that they would conclude that Muzmatch was connected in a material way with Match’s marks. They would believe Muzmatch to be a sub-brand. Therefore, the likelihood of confusion between Muzmatch and Match is high, said the court, and Muzmatch was taking unfair advantage of Match’s trade marks.
Mr Shahzad must surely have been advised that his chances of successfully arguing that the term ‘Match’ is descriptive were extremely slim given the huge brand awareness that the Match brand enjoys. So, I’m curious why he would even choose the name Muzmatch in the first place given that it was quite likely that a court would reach the conclusion that it has reached.
Mr Shahzad was likely aware that he was taking a big risk in using the name Muzmatch so why did he persist? Why didn’t he just choose a less risky name and avoid the need to spend £1,000,000+ fighting a well-known brand for the right to use a name similar to theirs? No name justifies knowingly risking court battles, but especially when you are up against a well-known household name brand, and you have a weak case. Why would you persist in using a name, and accept the certain risk of litigation?
If you have your heart set on a name you might be more justified in accepting the risks of litigation if you are a bigger business than the other party because you could ultimately buy the name from them.
Founders need to understand and manage risks effectively. They need a better understanding of names, so they know when it might be worth the risk of getting into a fight with a much larger, better-resourced brand. The Brand Tuned Accreditation program is, among other things, designed to equip founders and brand consultants with a clear understanding of the legal concept of distinctiveness.
In my experience, some people have a blind spot when it comes to names. There is no area of business where founders are so willing to gamble and disregard legal advice as over names. They entertain inappropriate risks and are absolutely sure they are in the right, when they’re often not. I discussed this in relation to the China Tang name and how the founder of that business incurred greater costs than he need have done because he was so sure of his right to use the name.
The Muzmatch case highlights a fundamental failure to understand that while some terms might initially be descriptive in an industry, they can become distinctive through use so that they cease to be up for grabs. Match is such a name, whereas Oaty wasn’t in the recent dispute over the name PureOaty. The difference between these cases is that Match was not a generic word like Oat was in the context of what each of these businesses sell. Match was distinctive enough to function as a trade mark, albeit initially it was decided to include a .com suffix to increase its distinctiveness. However, a word like Oat or Oaty could not have functioned as a trade mark on their own, probably even with the addition of a .com suffix. It was the addition of the letter L to Oaty that made it distinctive. The fact that Oatly is now well known does not render the underlying words Oat and Oaty distinctive because these are generic words which must be kept free for other traders to use. The mark is only distinctive when the L is present. By contrast Match has, with the passage of time become highly distinctive through use as a word in its own right, even without the .com suffix. It’s commonly referred to as Match. Most importantly, there are plenty of other words traders can use in the dating industry. So, it is far from generic. Just as the Addidas 3 stripes have become distinctive through use and enforcement, so a name like Match has become distinctive.
Therefore, to my mind it’s foolhardy that Mr Shahzad would have chosen to use the name Muzmatch, and is even now refusing to give up the fight. He will almost certainly lose if he appeals the latest decision. So a rebrand will be necessary. That means starting over with a new name. It will take time to build recognition to a new name and he won’t conveniently be able to just redirect traffic to the new name or alert searchers that this is the old Muzmatch app. I suspect that if Match wanted to launch their own Muslim-based app they could call it Muzmatch and benefit from the success that the infringing Muzmatch name has garnered to date.
So, although Mr Shahzad has reportedly in the past declined Match’s offer to buy the Muzmatch app for $35 million I suspect Mr Shahzad’s best bet now is to try to sell his app to Match because raising awareness with a new name will be an uphill battle.
Mr Shahzad has been obstinate in refusing to respect Match’s rights and is now calling Match a bully who threw its weight around to stifle competition. But this is not a David and Goliath story. It is the story of a man who doesn’t understand the legal concept of distinctiveness, and hence refuses to believe that the law is not on his side. So he opted to fight a losing battle. I hope for Mr Shahzad’s sake that Match is still willing to buy his app.
If you’re a founder or brand consultant who wants to learn what’s involved to create a new brand, and choose legally effective, distinctive names, and visual identifiers, then sign up to do the Brand Tuned Accreditation program. There is a half price offer that is still available. I’d love to help you to learn how to create stand out brands that are designed to succeed.
