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18 October 2011

Establishing Goodwill in the UK for Web-Based Businesses - Hits on a Website from the UK are Not Sufficient: Plentyoffish Media Inc v Plenty More LLP

Establishing Goodwill in the UK for Web-Based Businesses - Hits on a Website from the UK are Not Sufficient: Plentyoffish Media Inc v Plenty More LLP

On 11 October 2011, HHJ Birss QC (sitting as judge of the High Court) released his decision on whether Plentyoffish Media Inc (the appellant) was entitled to prevent the use of Plenty More LLP (the respondent)’s UK trade mark PLENTYMOREFISH (word + ‘fish’ device), registered for ‘dating agency services’, on the basis of the appellant’s alleged passing off rights in the signs ‘PLENTY OF FISH’ and ‘plentyoffish.com’ (used in relation to online dating services).

Mr Landau (for the Registrar the Comptroller-General) had dismissed the appellant’s original application to the UK IPO’s Trade Mark Registry for a declaration of invalidity of the respondent’s mark because he was not persuaded that the appellant had the requisite goodwill in the UK. The appellant claimed that its website was the second most viewed dating website in the UK and one of the 150 most visited websites in the UK overall, but was not able to show that it had any actual customers in the UK at the relevant time (ie, at the date on which the respondent applied for its mark). Was this sufficient to establish that the appellant had a ‘trade connection’ in the UK?

On appeal, Judge Birss QC agreed with Mr Landau’s decision. When it comes to a web-based business allegedly offering services in the UK, a reputation in the UK (eg, hits on a website) is not sufficient, actual customers are required to establish goodwill. In the case of a sign used in relation to online dating services, UK customers would be UK-based members of the public who join the appellant’s website and effectively use its dating services.

The appellant also argued that, because the dating services are provided for free (ie, there is no registration fee), the appellant’s actual business is the sale of advertising space on its website and its revenue is dependent on the number of hits or visits. Therefore, even if UK-based web users were not joining the appellant’s website, hits from the UK generate revenue for the appellant.

The judge rejected this argument as well, noting that for a member of the UK public to be a customer there must be some sort of provision of the services in relation to which the ‘signs’ are used (ie, online dating services). The appellant could not invalidate the respondent’s mark on the basis of its goodwill and reputation in advertising services.

Useful links

Full text of decision: Plentyoffish Media Inc v Plenty More LLP [2011] EWHC 2568 (Ch)

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