The operator of a US dating website, Plentyoffish, opposed an application by Plenty More, a UK dating website, to register a figurative trade mark using the words “plenty more fish”. Plentyoffish argued that it operated one of the largest dating websites in the world from the plentyoffish.com domain name, and the registration of the trade mark would constitute passing off. For passing off, the wronged party has to show that it has goodwill, someone else has made a misrepresentation as to its link with that goodwill causing customer confusion and damage. Plentyoffish said that customers were confused into signing up with Plenty More when they thought it was really Plentyoffish.
The High Court rejected Plentyoffish’s argument under section 5(4)(a) of the Trade Marks Act 1994, on the basis that Plentyoffish had no goodwill in the UK at the time when the application was made and had not shown that any UK residents had become members of its website. As it had no UK customers, the registration of the trade mark in the UK did not constitute passing off. There was a difference between having a reputation and acquiring goodwill. It may be that people in the UK knew of Plentyoffish because UK users had visited the site and so it had a reputation; however, goodwill required it to have customers, which was not the case here. Customers would mean that they actually received the goods or services (whether or not it was provided for free).
It may not be much consolation for the loser, but at least there are plenty more fish in the sea.
