The High Court rejected claims made by US online dating company Plentyoffish Media that it was entitled to assert rights over UK-registered trademarks because it had high UK visitor numbers to its website.
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 firm’s claims that Plenty More was “passing off” its dating service website, “plentymorefish,com”, as its belonging to the US brand. The judge rejected Plentyoffish’s claims that the Intellectual Property Office (IPO) had failed to apply UK trademark 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 trademark has established “goodwill” in the business associated with that trademark, 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 trademark 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.