In a decision handed down on Friday 10 February 2017, the UK IPO refused an application of Robert Magill to register the mark “matchedharmony” in relation to “online dating via a website; dating services”. The opposition was filed by A.A. Thornton & Co. on behalf of one of the leading providers of online dating services, eHarmony, Inc.
eHarmony’s online dating website uses a sophisticated psychological algorithm to match people for successful relationships. eHarmony has been active in the UK since 2008 and it is one of the most popular on-line dating services in this country. The applicant’s mark, “matchedharmony” had been used to a limited degree in relation to an on-line dating site using astrological factors to match potential partners.
The opposition was based on eHarmony’s registered rights in the mark eHarmony as well as their common law rights.
Both parties filed extensive evidence on issues including the use that had been made of their marks and the activities of other parties in the market.
The application was refused on the basis that the use of the mark is liable to be prevented by the law of passing off. In reaching this conclusion the Hearing Officer considered the classic trinity relating to passing off: goodwill, misrepresentation and damage.
In relation to goodwill, the Hearing Officer stated that eHarmony’s evidence was “compelling” and that “the evidence shows that it is a significant business, one of the leading players in the UK market”. The evidence was sufficient for the Hearing Officer to conclude that it “demonstrates a particularly strong goodwill”. The attempts of the applicant to undermine eHarmony’s reputation by reference to a small number of critical reviews were rejected by the Hearing Officer as “unfounded”.
The Hearing Officer rejected the applicant’s assertions that their services were differentiated by the use of astrological algorithms and different forms of marketing materials. Mr Magill’s assertions that the word “harmony” was generic in relation to on-line dating services was not accepted – on the contrary, it was held that members of the public would associate “harmony” with eHarmony due to its prominent use within the mark eHarmony – as a result the use of “matchedharmony” would give rise to a misrepresentation.
In light of these conclusions relating to goodwill and misrepresentation it followed that damage was made out and the application was refused.
The application was also opposed by match.com, another provider of on-line dating services, but their opposition was unsuccessful.