Los Angeles – U.S.-based dating website, Plentyofish.com was rejected by the High Court in England over its claims that it was entitled to assert rights over UK-registered trademarks because it had a high number of UK visitors to its website.
The claims were rejected after Justice Birss QC determined that Plentyofish Media did not actually have any paying customers in the UK and that it does not own any “goodwill” trademark rights over UK-based rival Plenty More LLP. The judge dismissed the U.S. site’s argument that Plenty More was attempting to “pass off” its dating website, Plentymorefish.com, as its being associated with the U.S. site. Plentyofish’s claims that the Intellectual Property Office (IPO) in South Wales had failed to apply UK trademark law correctly.
“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 decision. He added, “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.
According to UK intellectual property laws, if a business can prove that its use of a trademark has established “goodwill”, or essentially a good reputation, in the business associated with that trademark, then goodwill rights are protectable. Much like trademark laws in the U.S., the UK laws will also protect you if another like business “passes off” their products or services as being yours and is making claim that its services are yours or that you are someway connected or endorsing the services. As long as you can demonstrate that you have suffered damages as a result of the infringement, then you can seek damages and injunctions preventing the unauthorized use.
Furthermore, trademark rights are also protected in the UK by registering the trademark at the UK Trade Marks Registry. According to the UK Trade Marks Act of 1994, a trademark may be rejected 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.”
The U.S.-based Plentyofish.com is a free service but asked its visitors to register as members. It argued that Plentymorefish.com, a paid, subscription-based service, was misleading and caused some visitors to register with the subscription service in the belief that they were signing up for Plentofish.com’s free service instead.
Plentyofish argued that the visitor numbers alone indicated that it was entitled to “goodwill” rights to the trademark. It also claimed that visitors to the sight could be considered “customers” since they had been “exposed” to the site’s advertising, a claim sharply rejected by the judge.