Plenty more fish, but no customers

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Plenty More LLP began an online dating service in 2006. In 2007 they applied for a figurative trade mark incorporating the words ‘Plenty More Fish’.

Canadian company Plentyoffish Media Inc opposed registration of the trade mark above, stating that they had acquired goodwill in the name. They claimed the mark was liable to be prevented by the law of passing off.

The essential question was whether Plentyoffish had acquired the requisite goodwill in the name. 

Do ‘hits’ mean goodwill?

Despite widespread success in Canada and the US (apparently the website has appeared in a number of music videos, including those of Lady Gaga, Flo Rida and Britney Spears) there was no evidence of any customers whatsoever in the UK. 

Plentyoffish claimed to be the second most visited dating website in the UK. But do ‘hits’ alone equate to goodwill? 

The judge quoted a case 800-Flowers Trade Mark ([2000] FSR 697) thus: 

the mere fact that websites can be accessed anywhere in the world does not mean, for trade mark purposes, that the law should regard them as being used everywhere in the world.”

A reputation in the UK alone will not be sufficient to establish passing off. Actual customers are required, thought the Judge in the present case.

However, Plentyoffish argued that they did have ‘customers’, due to the fact that visitors to the website provide revenue for the company through advertising.

The Judge did not accept this submission, stating 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,” i.e. dating agency services. 

It seems Plentyoffish cast their rod too far and were unable to establish goodwill in the UK. The opposition of Plenty More’s trade mark was therefore rejected. 

[2011] EWCH 2568 (Ch), 11 October 2011+

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