This case note features an appeal by Match.com before the UKIPO. Match.com originally opposed an Application for the sign, MUSLIM MATCH, covering various services in Class 45. The Application was opposed on the basis of Match.com’s earlier MATCH and Match.com registrations, covering various services in Class 45 including “match-making services; computer dating services; provision of dating agency services via the Internet”, amongst others.
The Hearing Officer in the Opposition found the marks to be similar, and held that the majority of services in Class 45 in the Application were identical and/or highly similar to those covered in the earlier registrations (“Group A services”), but several services including “relationship counselling; marriage guidance counselling; marriage counselling and coaching” were deemed to not be similar (“Group B services”). As the Opposition was only successful in relation to the Group A services, Match.com then appealed the decision on various grounds, claiming that all the services in Class 45 were at the very least similar.
In the appeal, Match.com argued that the Hearing Officer had erred in the majority of her findings that enabled her to reach her judgement, and argued that:
Interestingly, Match.com made no reference to the evidence on the original opposition file in support of their assertions in the appeal, and they instead made extensive additional assertions of a factual nature (for example, claiming that the respective services in question are all offered within the same trade channels), which were not supported or substantiated. As a result, the Hearing Officer simply did not assess or analyse Match.com’s additional assertions beyond the scope of the evidence filed in the original Registry proceedings.
Another interesting element to this case (as confirmed by the Appointed Person in the Appeal decision) was that the Hearing Officer should have analysed Match.com’s original objection in the Opposition under section 5(4)(a) of the Trade Marks Act 1994 in accordance with the legal requirements for liability under the law of passing off. However, she failed to do so, and the reasoning she gave for not making the required determination under this ground was not sufficient. Unfortunately, Match.com failed to address this error by the Hearing Officer within their appeal, and as a result they missed out on what was perhaps their strongest ground for appeal.
The appeal was ultimately dismissed. The majority of new assertions made by Match.com could not be considered as they were not substantiated, meaning the original decision by the Hearing Officer was upheld. The case serves as a useful reminder to trade mark owners and their representatives alike that taking a step back and giving full consideration to all the available grounds within an appeal is critical to success. It also highlights that any further ‘facts’ claimed within an appeal in support of your case must always be evidenced and substantiated, if you expect them to be taken into consideration.