In Plentyoffish Media Inc v Plenty More LLP  EWHC 2568 (Ch), the High Court of England and Wales has held that a foreign company’s reputation in the United Kingdom does not equate to goodwill in the United Kingdom and that actual customers are needed to bring an action in passing off.
Plentyoffish has apparently been operating one of the largest online dating services in the world under the name “Plentyoffish” since 2002. The site is claimed to be the second most viewed dating website in the United Kingdom and one of the 150 most visited websites in the country. There is no charge to join Plentyoffish’s dating services as the site is funded by online advertising.
Plentyoffish applied for a declaration of invalidity in respect of the figurative mark shown below, registered for dating services, on the basis that use of the mark was liable to be prevented by the law of passing off, contrary to Section 5(4)(a) of the Trade Marks Act 1994. It argued that it had acquired goodwill in the United Kingdom in the sign “Plenty of Fish” and that using the registered mark would cause a misrepresentation and that damage would be suffered or likely to arise.
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Plenty More LLP, started an online dating agency plentymorefish.com in 2006. Allegedly, there had been instances of confusion between the two services. In particular, customers had registered with Plenty More’s service, believing that it was the service operated by Plentyoffish, and had complained when money was debited from their credit cards.
Dismissing the application, the UK Intellectual Property Office held that the Section5(4)(a) ground was not made out because Plentyoffish had no goodwill in the United Kingdom on the relevant date. Despite evidence of hits or visits to the website from the United Kingdom, Plentyoffish had not shown that it actually had any customers or business in the country.
On appeal, Plentyoffish argued that all that was needed was a “trade connection” and that this was satisfied by the large number of hits or visits to its site at the relevant time. Plentyoffish also contended that the UK visitors should be regarded as customers, submitting that, with around four million UK visitors in 2007, its website had the benefit of an attractive force in bringing people to the site, even if it had no actual customers in the United Kingdom. According to Plentyoffish, this indicated goodwill.
Plenty More LLP argued that in the case of a foreign claimant, the relevant goodwill had to be UK goodwill, that a distinction had to be drawn between goodwill and reputation, and that a mark might be known to the public in the United Kingdom, but that this was not enough to found a cause of action.
Agreeing with Plenty More LLP, HHJ Birss found that a reputation in the United Kingdom was not sufficient and that customers in the United Kingdom were required whether the business provided products or services. The judge said that Plentyoffish’s “attractive force” submission had to be treated with care since it elided the existence of a reputation with the business to which the reputation must attach. It was clear on the authorities that a reputation alone was not sufficient.
This left the question of whether visitors to Plentyoffish’s site, regardless of their status as members, constituted customers. The judge accepted that the concept of “customers” must include people to whom the relevant services were actually provided, even if they received those services for free. The fact that they had not been charged was irrelevant provided Plentyoffish could show that it had indeed provided dating services to people in the United Kingdom. However, there was no evidence that before the relevant date visitors from the United Kingdom could even become members. The fact that Plentyoffish could earn money from its reputation was irrelevant. Plentyoffish had sought to equate visitors from the United Kingdom with “customers” on the basis that the business earned revenue from advertisers as a result of their visits or “hits”. The judge said that this argument had “lost touch with what the case is about”: a trade mark case about a sign used in relation to a particular class of service. For a member of the public to be a customer there still therefore had to be some sort of provision of the services in question.