Requirement For Customers To Demonstrate Goodwill In UK Passing-Off Action

In PlentyofFish Media Inc v Plenty More LLP, the English High Court has held that in order to demonstrate goodwill in a passing-off action there must be actual, existing customers within the UK. Since September 2006, Plenty More LLP (Plenty More) has operated a paid online dating service. In 2007 it applied for and registered the following PLENTYMOREFISH mark for dating services: PlentyofFish Media Inc (PlentyofFish) applied to invalidate the registration, claiming passing off. Since 2001, PlentyofFish had operated a free online dating service, which is one of the largest online dating services in the world. It claimed to be the second most-viewed dating service web site in the UK and one of the 150 most visited sites in the UK. PlentyofFish claimed that it had goodwill in the UK in the sign “Plenty of Fish” (and “plentyoffish” and its web site “plentyoffish.com”), and it had the right to prevent the use of the PLENTYMOREFISH mark on the basis of passing off. In February 2011, the Trade Mark Registry refused PlentyofFish’s application to invalidate the PLENTYMORE FISH trade-mark registration because PlentyofFish had no goodwill in the UK at the relevant time. PlentyofFish appealed to the UK High Court (Court). The Court held that merely having a reputation in the UK was not sufficient to establish passing off, and goodwill was also required, something that must be established by demonstrating customers in the UK. PlentyofFish failed to establish goodwill as it did not show that it had provided its dating services to UK customers at the relevant time. The Court upheld the Registrar’s decision and dismissed the appeal. For the full-text reasons in PlentyofFish Media Inc v Plenty More LLP, [2011] EWHC 2568 (Ch), visit: http://www.bailii.org/ew/cases/EWHC/Ch/2011/2568.html Summary by: Lauren Lodenquai