Supreme Court Asks Matrimony.com, FreeElective Network To Explore Settlement In 'Jodii' Trademark Dispute

The Supreme Court on Friday asked matchmaking app Matrimony.com Ltd and FreeElective Network Pvt Ltd to explore an amicable settlement in a trademark dispute concerning Matrimony.com's 'Jodii' matchmaking app and FreeElective's registered 'Jodi365' mark.

The Court was hearing Matrimony.com Ltd's challenge against the Madras High Court order that restrained Matrimony.com from using the mark 'Jodii' for its matchmaking app.

The High Court's Division Bench 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.

The Court held that 'Jodii' was deceptively similar to 'Jodi365'. It held that the similarity could confuse customers into believing that the two services were associated.

A bench of Justices Pamidighantam Sri Narasimha and Alok Aradhe ultimately asked the parties to explore settlement and indicated that the matter would be taken up after the parties considered whether a mutually acceptable solution could be worked out.

Senior Advocate Amit Sibal, appearing for Matrimony.com, argued that the Division Bench had erred in reversing the Single Judge's judgment. He submitted that FreeElective did not hold a registered trademark in Class 45, which covers matrimonial and matchmaking services, whereas Matrimony.com had several registrations in the relevant class.

Sibal said, “There are two central errors... One, they have no trademark registration in class 45. So there can be no infringement.” He also argued that the word 'Jodi' could not be exclusively appropriated as it was a descriptive and common term meaning a couple or pair in several Indian languages.

He submitted that Matrimony.com had numerous 'Jodi'-formative registrations in Class 45 and that the word was commonly used in the matchmaking space. Referring to third-party usage, Sibal said there were “213 third party websites that use some form of Jodi, and 18 apps that use some form of Jodi.”

The bench questioned Sibal on the fact that FreeElective had been using the mark for several years. Sibal responded that prior use of a descriptive mark could not by itself confer a monopoly over the descriptive term.

He referred to the Supreme Court's decision in Pernod Ricard and submitted that generic and descriptive terms commonly used in a trade could not ordinarily be monopolised.

Sibal also referred to the Single Judge's findings that an ordinary internet search produced numerous results using 'Jodi' in different forms, and argued that the Division Bench had failed to identify a proper infirmity in the Single Judge's judgment before reversing it.

Senior Advocate Gopal Sankaranarayanan, appearing for FreeElective Network opposed Matrimony.com's challenge and submitted that FreeElective had been using the 'Jodi365' mark since 2010, while Matrimony.com adopted 'Jodii' much later.

He relied upon the concurrent findings concerning prior use, deceptive similarity and the distinctiveness acquired by the composite 'Jodi365' mark.

Referring to the findings of the courts below, he submitted that the Single Judge had found that the composite mark had acquired distinctiveness on account of its long use, turnover and recognition in the market.

He read from the judgment that “by making allowance for the nature of the service, if one puts oneself in the shoes of a subscriber, a potential subscriber,” there was sufficient basis to conclude that the composite mark 'Jodi365' had acquired distinctiveness.

Sankaranarayanan argued that the dispute was not merely about the standalone word 'Jodi' but about the overall similarity between the competing marks and the likelihood of confusion among consumers of the matchmaking services.

Sankaranarayanan also emphasised that Matrimony.com had a substantial existing business and that the injunction was not merely an interim arrangement but followed the final adjudication of the suit. He submitted that the Division Bench had found no infirmity in the Single Judge's findings warranting interference in the manner sought by Matrimony.com.

During the hearing, the bench considered the possibility of resolving the dispute without further litigation. Matrimony.com's counsel indicated that the company was willing to alter the name of its app to “Jodi Matrimony” to avoid an immediate shutdown of the business.

The counsel submitted, “I'm willing to change to Jodi Matrimony immediately, just so that the business does not shut down.” He emphasised that the company had around 30 lakh active users and that an immediate enforcement of the High Court's order could seriously disrupt the business.

The Court however, indicated that the parties should consider the proposal and attempt to resolve the dispute. When counsel sought an immediate resolution, the bench indicated that it would consider the matter after the parties had explored the possibility of settlement.

The Court ultimately asked the parties to explore settlement and indicated that the matter would be taken up after the parties considered whether a mutually acceptable solution could be worked out.