In a judgment from HHJ Colin Birss QC, the High Court has considered the issue of passing off and specifically whether, in order to demonstrate goodwill in the UK, it is necessary to prove the existence of actual customers in the UK.
Plenty More LLP owned the registered mark for PLENTYMOREFISH in relation to agency services (dating); computer dating services and dating services ("the mark") which was applied for in April 2007. Plenty More started its online dating agency with the URL plentymorefish.com in September 2006. The public can join the Plenty More dating agency by paying a joining fee. Plentyoffish Media Inc applied to invalidate the mark on the basis that use of the mark would fall foul of section 5(4)(a) of the Trade Marks Act 1994 ("the Act") which states:
"(4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented –
(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade."
Plentyoffish claimed that, at the time the Mark was applied for, it had goodwill in the UK in relation to the words "Plenty of Fish" as it operates an online dating agency under the same name and has done so since 2001. Plentyoffish.com. claims to be the second most viewed dating website in the UK and is free to join. The site is funded by online advertising.
Plentyoffish claimed that use of the mark would constitute passing off and pointed to specific instances where consumers had gone to plentymorefish.com believing it to be the free site offered on plentyoffish.com.
An application for a declaration of invalidity was made to the Trade Mark Registry. The registrar dismissed the application on the basis that Plentyoffish had no goodwill in the UK because it, surprisingly, did not demonstrate that it had any customers or business in the UK. Plentyoffish appealed the decision to the High Court, which focused on three issues:
- Whether customers are required for goodwill
- Whether a trade connection is required
- Whether visitors to the website could be regarded as customers even if they were not members.
Birss HHJ concluded that a reputation in the UK is not sufficient to constitute goodwill. Customers are required, as was held by Lloyd LJ in Hotel Cipriani v Cipriani (Grosvenor Street). Whether or not a trade connection existed was therefore irrelevant.
Birss HHJ considered whether visitors to the site could be regarded as customers. This argument was based on the fact that plentyoffish.com is funded by advertising income, while membership is free. As visitors to the site are exposed to the advertising, they should constitute customers. Birss J accepted that customers:
"...must include the people to whom the relevant services are actually provided even if, in a case like this, they receive the services for free."
If Plentyoffish had demonstrated that it had provided dating services to people in the UK, the fact that the service was free would be irrelevant. They had failed to do so. Even if visits to the site earned revenue for Plentyoffish, the trade mark in issue relates to dating services and not advertising. Birss J stated:
"It seems to me that for a member of the public to be a customer, no matter how far that concept is stretched, there still has to be some sort of provision of the services in question. The Appellant is not seeking to invalidate a trade mark registered for advertising services nor is the Appellant claiming a goodwill or reputation in advertising. This case is about dating services."
At the date of the filing of the mark, there was no evidence that Plentyoffish had provided any dating services to anyone in the UK. The fact that it could earn money from its reputation through advertising had no bearing on the passing off claim and the appeal was rejected.
To a certain extent this case needs to be treated on its facts. It does seem surprising that Plentyoffish was unable to, or chose not to, demonstrate any UK customer base at all at the relevant date. Businesses must do more than simply provide a web based "shop front" if they are going to seek to enforce their unregistered brands in the UK.