Plentyoffish Media Inc. v Plenty More Llp

For passing off purposes, a foreign business must establish UK goodwill rather than reputation alone. Customers in the United Kingdom, or business with customers there, are required, whether the claimant supplies goods or services. Visitors or website hits do not establish the necessary customer relationship unless the relevant services are actually provided to them. Services supplied free of charge may still constitute business with customers. Goodwill must attach to an existing business, so publicity may generate goodwill where the business is already situated in the United Kingdom, but it cannot substitute for UK customers where the foreign business has no UK business.

The appellant appealed from the Registrar’s dismissal of its application under section 47 of the Trade Marks Act 1994 to invalidate the respondent’s registration for dating and dating-agency services. The appellant relied on section 5(4)(a), claiming goodwill in the signs “Plenty of Fish” and “plentyoffish” through its free online dating service.

The Registrar accepted that the appellant had received substantial visits from the United Kingdom but found no evidence that it had UK members or customers by 27 April 2007, the relevant date. The central issue on appeal was whether website visits, reputation, or a wider trade connection could establish the UK goodwill required for passing off without evidence that dating services had actually been provided to UK customers.

1. Appeal dismissed. The Registrar applied the correct legal test in requiring evidence of UK customers or business with customers in the jurisdiction.
2. A reputation in the United Kingdom is insufficient by itself to establish the local goodwill required for passing off. Customers of some kind are required for both goods and services businesses. The court treated the Court of Appeal’s decision in Hotel Cipriani v Cipriani (Grosvenor Street) Ltd [2010] RPC 16 as binding support for that conclusion.
3. For a service supplied free of charge, the relevant customers may be the people to whom the service is provided. The absence of payment does not prevent a customer relationship. The appellant nevertheless had to prove that it had provided dating services to people in the United Kingdom.
4. Website visits and advertising revenue did not satisfy that requirement. The relevant trade mark concerned dating-agency services, not advertising services. Visitors could not be treated as customers merely because their visits might generate advertising revenue. The absence of evidence that UK visitors could become members entitled the Registrar to draw the inference that no UK members or customers had been established by the relevant date.
5. The court distinguished HOUSE DOCTOR O-242-04 and BBC v Talbot [1981] FSR 228. Those decisions concerned publicity attaching to businesses situated in the United Kingdom and did not resolve the separate problem of a foreign business with no demonstrated UK customers.

• High Court (Chancery Division): Appeal from the Registrar’s decision dated 1 February 2011. The appeal was dismissed.