A division bench of the Madras High Court has restrained Matrimony.com from using Jodii or any other mark deceptively similar to Free Elective's registered Jodi365 trademark.

The August 11 order overturned a July 2022 single-judge ruling that had dismissed Free Elective's trademark infringement and passing-off suit against Matrimony.com.

The division bench also directed Matrimony.com to surrender for destruction all materials bearing the Jodii mark or another deceptively similar mark, including brochures, screen prints, packaging, advertisements, and online material.

However, the court rejected Free Elective's demand for ₹1 Cr in damages, saying the company had not presented oral evidence to establish the extent of the loss it suffered.

Matrimony is contemplating moving the Supreme Court (SC) against the order. "Based on legal advice, (the) company is contemplating to file (an) appeal before (the) Hon'ble Supreme Court," Matrimony said in an exchange filing.

How The Dispute Began

Free Elective operates Jodi365, an online matchmaking platform whose device mark has been registered since May 2010 across classes covering advertising, telecommunications, and entertainment and educational services.

The company claimed that it has been using the Jodi365 mark since 2009 and has built substantial goodwill around the brand.

Matrimony.com, meanwhile, launched its matchmaking app Jodii in October 2021 under the BharatMatrimony umbrella.

Free Elective subsequently sent Matrimony.com a cease-and-desist notice in November 2021, alleging that Jodii was deceptively similar to its registered mark and could confuse consumers because the two platforms offered similar services.

Matrimony.com rejected the allegation, arguing that Free Elective's registration covered the composite device mark Jodi365 rather than the standalone word Jodi.

It contended that Jodi, meaning a pair or couple, directly describes the purpose of matchmaking services and cannot be monopolised by a single company. Matrimony.com also cited several other matchmaking and dating platforms that used Jodi in their names.

Free Elective then approached the Madras High Court, seeking permanent injunctions against trademark infringement and passing off, the destruction of materials bearing the allegedly infringing mark, and ₹1 Cr in damages.

The 2022 Verdict

In July 2022, a single judge bench of the Madras HC, dismissed Free Elective's suit after finding that the word Jodi was descriptive of matchmaking and matrimonial services.

While the court recognised Free Elective as the registered proprietor and prior user of the composite Jodi365 device mark, it held that the company could not claim exclusivity over Jodi as an individual element.

The court also compared the two marks and their overall presentation and concluded that the differences were sufficient to rule out a likelihood of consumer confusion.

Free Elective subsequently challenged the ruling before a division bench of the HC.

Why The Bench Disagreed

The division bench disagreed with the single judge's decision to assess Jodi separately from the complete Jodi365 trademark.

It held that Jodi was the distinguishing, prominent, and essential feature of Free Elective's registered mark and that the trademark had to be considered as a whole.

The court also found that Matrimony.com had not initiated proceedings to rectify or cancel Free Elective's trademark registration. Therefore, it could not challenge the validity of the registered mark as a defence in the infringement suit.

On the question of passing off, the bench said the earlier ruling had focused on the visual differences between the two marks without adequately considering their phonetic similarity.

It held that Jodi365 and Jodii are deceptively similar and can lead consumers to believe that the two matchmaking services are associated with each other.

The bench also admitted additional evidence comprising communications and transcripts or recordings of 11 interactions in which consumers allegedly confused Jodi365 with Matrimony.com's Jodii.

Matrimony.com's argument that Jodi is commonly used by other matchmaking platforms also failed to convince the bench. The court said the company did not submit evidence establishing the scale, reach, or reputation of the third-party platforms it cited.

Consequently, the bench set aside the 2022 judgment and granted Free Elective the injunctions and other reliefs it had sought, barring the damages claim.