Madras High Court Restrains Matrimony.com From Using 'Jodii' Mark For Matchmaking App

The Madras High Court has restrained Matrimony.com Limited from using the mark 'Jodii' for its matchmaking app. It set aside a 2022 order of a Single Judge that had dismissed FreeElective Network's suit alleging infringement and passing off of its registered 'Jodi365' trademark.

A Division Bench comprising Justice P. Velmurugan and Justice K. Govindarajan Thilakavadi ruled that 'Jodii' was deceptively similar to 'Jodi365'. It held that the similarity could confuse customers into believing that the two services were associated.

“We find in the case on hand that there is a deceptive similarity between the appellant's mark and the respondent's mark,” the bench held.

It further observed that customers seeking FreeElective's services “are likely to be confused and enrol with the respondent's website thinking that they are associated with each other.”

FreeElective Network, which operates Jodi365.com, had approached the Single Judge seeking an injunction against Matrimony.com's use of 'Jodii'. It also sought damages of Rs 1 crore.

The company claimed to be the registered proprietor of 'Jodi365' under a single multi-class application covering Classes 35, 38 and 41. It told the court that it had been using the mark since 2009 and that more than 3.25 lakh people had visited Jodi365.com.

FreeElective also claimed substantial reputation and goodwill for the mark. Matrimony.com launched its 'Jodii' mobile app in October 2021 under the house mark 'BHARATMATRIMONY'.

Matrimony.com maintained that FreeElective's registration was for the composite 'Jodi365' label. It argued that the registration did not give FreeElective exclusive rights over the word 'Jodi'.

It also pointed to several other matrimonial and dating websites using 'Jodi'. Matrimony.com argued that this showed that 'Jodi' was common to trade.

The Single Judge dismissed FreeElective's suit on July 14, 2022. While finding that the composite 'Jodi365' mark had acquired distinctiveness, the judge held that 'Jodi' itself was descriptive and non-distinctive.

The Division Bench disagreed with that approach. It observed that 'Jodi' was “the distinguishing, prominent and essential feature” of the registered mark.

Since trademark use is composite, the distinctiveness of a sub-element cannot be separately proved, the Bench held. It referred to Section 17 of the Trade Marks Act, 1999.

The Bench also rejected the approach taken on passing off. It observed that the Single Judge had relied on the visual appearance of the marks without considering their phonetic similarity.

“The mere visual comparison of the marks without adverting to the phonetical similarity of 'Jodi365' and 'Jodii' is untenable,” the Bench observed, relying on the Supreme Court's ruling in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.

On Matrimony.com's argument that 'Jodi' was common to trade, the Bench found that there was no evidence showing the “volume, extent, and reputation of business” of the third-party websites cited by the company.

The bench observed that Matrimony.com could not sustain the defence merely by pointing to those websites, in the absence of qualitative evidence.

The bench also took note of 11 sample communications between FreeElective and consumers that were produced as additional evidence. The communications showed instances of consumers confusing Jodi365 with Jodii.

Allowing the appeal, the bench set aside the Single Judge's judgment. The Bench set aside the Single Judge's judgment and decreed the suit, granting FreeElective injunctions against infringement and passing off. It also directed the surrender and destruction of materials bearing the mark 'Jodii.'

The court, however, declined to award the Rs 1 crore damages claimed by FreeElective. The company had not led oral evidence to establish the extent of the loss it suffered, the bench observed.