Intellectual Property Disputes.
Plentyoffish Media Inc. v Plenty More Llp [2011] EWHC 2568 (ch):
In a recent Intellectual Property Disputes case The High Court has rejected a claim by Plentyoffish Media Inc. a company based in the United States of America which is an online dating service provider. Their membership is free and funded by advertisement income. They made an application to assert its rights over UK registered trade marks claiming it had a larger number of visitors to its website than its UK competitor.
Its UK competitor Plenty More Llp, are an online dating service provider who charge a fee to use their service Plenty More Llp registered “plentymorefish.com” as a domain name in September 2006 and had registered “plentymorefish” as a trade mark plenty more in April 2007.
Plentyoffish made an application to the Trade Mark Registry on the basis that they had acquired “goodwill” in the UK, from their use of the words “Plenty of Fish” which they had operated under in the UK since 2001. Under UK law it is possible to protect “goodwill”. However, to do so they would have to prove that Plenty More Llp, , were “passing off” their services as plentyoffish’s; under 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 –
- 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.
At the hearing the registrar dismissed Plentyoffish’s application on the basis that they did not show that they had UK customers.
Plentyoffish appealed to the High Court, with regards to the position on whether customers who were using the service for free are still customers; His Honorable Judge Briss accepted “that the concept of “customers” required by the English cases 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”. He continued “If the Appellant had been able to show that it had indeed provided dating services to people in the UK, the fact that the people had not been charged for that service seems to me to be irrelevant. The Appellant’s problem is that it has not proved any such thing”.
Further HHJ Birss then dismissed plentyoffish’s argument that they equate visitors from the UK with “customers”, even if they have not joined the site, simply because the business earns revenue from advertisers as a result of their visits or “hits”. He stated
“Even if it is correct in fact that such visits earn revenue for the business … the real problem is that the argument has lost touch with what the case is about. This is a trade mark case about a sign used in relation to a particular class of product or (in this case) service. 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 agencies. The Appellant’s problem is that it has not shown that it provided any dating agency services to anyone in the UK on or before April 2007.”
He concluded “The appeal will be dismissed.”
Therefore the fact that Plentyoffish provided its services for free was irrelevant. The issue was that the claim was about the service itself i.e. internet dating services and not a claim concerning advertising. The problem was that they could not prove that they had a relevant customer base in April 2007, Plentyoffish were therefore unable to invalidate the mark on the basis of prior rights or passing off.