US online dating website plentyoffish.com launched in 2001. UK competitor “Plenty More Fish” set up in 2006 and in 2007 filed to register a fish logo and the words PLENTY MORE FISH as a UK trade mark. The US site opposed, but did it have grounds? Miah Ramanathan reports the verdict.
Who: Plentyoffish Media Inc, the claimant and Plenty More LLP, the defendant.
When: 11 October 2011.
Where: English High Court, Chancery Division.
Law stated as at: 30 October 2011.
An attempt by a US based dating website to have the registration of a similar brand by a UK business declared invalid on grounds of passing off failed at the High Court because the US website did not have customers in the UK.
PLENTYOFFISH and PLENTYMOREFISH
The defendant began an online dating agency in 2006 and registered a figurative trade mark incorporating the words "PLENTYMOREFISH" for agency dating services in class 45 in October 2007 (the "Trade Mark"). In October 2008, the claimant, who since 2001 had also operated an online dating agency based overseas under the name PLENTYOFFISH, submitted an application to the UK Intellectual Property Office for a declaration of invalidity in respect of the Trade Mark under section 5(4)(a) of the Trade Mark Act 1994 (the "TMA").
The application was on the basis that the Trade Mark constituted an infringement of the claimant's common law rights in passing off. Section 5(4)(a) of the TMA provides that a trade mark shall not be registered if its use in the UK would otherwise be prevented under any rule of law (in particular the law of passing off) protecting an unregistered trade mark or sign from being used in the course of trade.
The Registrar dismissed the claimant's application in February 2011 on the basis that there were no grounds for the declaration of invalidity sought because the claimant had failed to provide evidence that it had provided dating services to customers in the UK and therefore generated goodwill in the UK as at April 2007 (the date of the defendant's application for the Trade Mark). The claimant appealed to the High Court which had to address whether the claimant had any rights in passing off in the UK. In particular, the High Court had to consider what constitutes goodwill when the trader is a foreign web-based business.
The tort of passing off
"A man is not to sell his own goods under the pretence that they are the goods of another man" (Perry v Truefitt (1842) 6 Beav. 66 at 73).
The tort of passing off enables a trader to protect the goodwill they have generated in their business and their trade mark from unfair competition in the form of use by a third party of a sign which would have the effect of "passing off" the third party's goods or services as those of the trader.
In order to bring a successful action for passing off, a claimant must satisfy the "classical trinity" test established by Lord Oliver in the Jif Lemon case (Reckitt & Colman Products Ltd v Borden Inc  RPC 341):
1. there must be evidence of goodwill or reputation in the UK attached to the goods or services;
2. the claimant must show that during the course of the defendant's trade, the defendant misrepresented, whether or not intentionally, to the public that his goods or services are those of the claimant; and
3. the claimant must prove that the defendant's misrepresentation would result in actual damage, or a likelihood of damage, to the goodwill in the claimant's business..
Judgment of the High Court
Birss Hon QC upheld the decision of the Registrar. Irrespective of the fact that UK nationals had visited the claimant's PLENTYOFFISH website and the reputation of that website in the UK, the claimant simply did not have any UK based customers. Therefore, it did not provide dating services to UK customers and had not generated any goodwill in the UK. The failure to establish the existence of goodwill in its dating services in the UK meant that the claimant had not satisfied the "classical trinity" test and consequently the defendant's use of the Trade Mark did not constitute passing off.
The claimant had also argued that the UK visitors to its PLENTYOFFISH website should be construed as its customers. The claimant's business model operated by providing its dating services free of charge via membership of the website and earned revenue from the sale of advertising space on the website to third parties. Therefore, the claimant suggested that its UK visitors generated revenue for the business simply by virtue of their visit to the website.
Having listened to these arguments, Birss Hon QC decided that for a member of the public to be a customer of the claimant's business it must have received and used dating services from the claimant. As the claimant had failed to provide evidence that it had provided dating services to UK customers, this argument failed. The provision of advertising services on or before April 2007 to third parties was irrelevant to the claimant's application to invalidate the defendant's Trade Mark.
Why this matters:
Birss Hon QC's decision followed the judgment of Lloyd LJ in Hotel Cipriani v Cipriani (Grosvenor Street) Ltd  RPC 16 which concluded that "an undertaking which seeks to establish goodwill in relation to a mark for goods [or services] cannot do so, however great may be the reputation of his mark in the UK, unless it has customers among the general public in the UK for those products".
The outcome of this case adds weight to the body of existing case law which requires a foreign web-based business to prove the existence of UK based customers who receive and use its services in order to bring a successful claim for passing off.
The judgment also helpfully clarifies the point that a member of the public who receives and uses services of a web-based business will be deemed to be a customer of such business, irrespective or regardless of whether the services are provided for a fee or free of charge.
Going forward, foreign web-based businesses should bear in mind that website hits from UK based visitors will not be evidence of UK customers. Existing case law supports the view that the courts do not accept that a business with customers in the UK may exist without goodwill. However, for a foreign business to generate goodwill in the UK by using a name, mark or sign, it must provide services in respect of that name, mark or sign to customers in the UK.