Out-Law News | 17 Oct 2011 | 1:03 pm | 3 min. read
The Court rejected claims made by US online dating company Plentyoffish Media that it was entitled to assert rights over UK-registered trade marks because it had high UK visitor numbers to its website.
Mr Justice Birss QC said that because Plentyoffish Media did not have any customers in the UK it did not own any 'goodwill' rights over UK marks owned by rival Plenty More LLP. The judge dismissed the US firms' claims that Plenty More was 'passing off' its dating service website, 'plentymorefish,com', as its belonging to it. The judge rejected Plentyoffish's claims that the Intellectual Property Office (IPO) had failed to apply UK trade mark law correctly when assessing the company's case.
"A reputation in the UK is not sufficient, customers in the UK are required and that is so whether the business provides products or services," the judge said in his ruling.
"Deciding who constitutes a UK customer from the point of view of a services business may involve tricky questions in some cases but as a matter of law in my judgment customers of some kind are required. Thus [the IPO] applied the right test when [it] sought customers (or a business) within this jurisdiction," he said.
In the UK if you can prove that your use of a trade mark has established 'goodwill' in the business associated with that trade mark, then this goodwill is protectable. Goodwill is essentially a reputation in the mark.
If another trader 'passes off' their services as being yours and appears to claim that their services are yours or that you are in some way connected or have endorsed the services, then you can take action. You can claim damages or seek an injunction to prevent that use, so long as you can show that you have or are likely to suffer damage as a result of the use.
Trade marks can be also be protected by registering the trade mark at the UK Trade Marks Registry.
A trade mark can be revoked if it is used in a way that might mislead the public "particularly as to the nature, quality or geographical origin of those goods or services", according to the Trade Marks Act.
Plentyoffish operated its own online dating service at 'plentyoffish.com' and claimed that it was the second most viewed online dating website in the UK and one of the 150 most visited sites in the country in total. This, it claimed, entitled it to 'goodwill' over its signs, according to the ruling.
The site was free to use, but the company asked visitors to sign-up as members. The company claimed that Plenty More had infringed its rights by using the trade marked sign 'plentymorefish' in a website domain for its subscription-based online dating service, which had been registered in the UK in April 2007.
Plenty More's website was confusing and caused some visitors to register with the subscription service in the mistaken belief that it was Plentyoffish's free service instead, the US company had argued, according to the ruling. Plenty More's use of 'plentymorefish' "would cause a misrepresentation and ... damage would be suffered or would be likely to arise," Plentyoffish had claimed.
Plentyoffish claimed that the visitor numbers alone meant it was entitled to goodwill rights to the sign. It said that visitors of the site could be treated as "customers" because they were "exposed" to the site's advertising and even though the dating service it provided was free. Mr Justice Birss rejected the argument and said that only members of the site could be considered as Plentyoffish's customers.
"The only class of people who could be customers of the [Plentyoffish's] business in the relevant sense were the members, the people who joined the site and used the dating services," Mr Justice Birss QC said in his ruling.
"There was no evidence that any such people existed in the UK in April 2007. [The IPO's] decision was right. The appeal will be dismissed," the judge said.
Helyn Mensah, trade mark law expert at Pinsent Masons, the law firm behind Out-Law.com, said that the ruling showed that building a UK reputation alone is not enough for foreign businesses to be able to assert trade mark rights in the country.
"The advent of the internet and the phenomenon of social media have resulted in many foreign businesses and brands achieving notoriety in this country without any actual market presence," Mensah said.
"As desirable as such fame and recognition may be it does not necessarily follow that such brands will be protected in this jurisdiction as a matter of course and it should not be assumed that this is the case," she said.
"What this High Court ruling confirms is that passing off protects custom and not trading names in general. There is a key distinction between reputation on the one hand and goodwill on the other. The key message for UK businesses is that they will not be displaced by foreign rivals laying claim to identical or similar brands unless those businesses have a prior customer base or have had the foresight to formally register relevant trade marks," Mensah said.