I found this judgment interesting as it merges aspects of e-commerce and IP modules.
The High Court rejects claims made by the US dating website "plentiymorefish.com", (plentymorefish.com was seeking protection of its TM under goodwill / passing off doctrines) due to the fact that its customers "where not in the UK", although this site had apparently kind of a reputation there.
http://www.theregister.co.uk/2011/10/18/plentyoffish_trademark_ruling/
Although I am not familiar with this dating site, I suspect that the issues related on the location where the contract is made/executed (of which Ian discusses in the first theme) may be of an interest in such cases.
Salva
The case has received a lot of publicity for a decision which - in my opinion - is not particularly interesting! (The decision is available here, for anyone who wants to read it in full.)
ReplyDeletePlentyoffish's case was flawed, pretty much, because Plentyoffish could not demonstrate a single UK customer - irrespective of where the contract was made - and because it could not distinguish the previous case law requiring this.
The court's finding was that it was bound by Hotel Cipriani, in which Lloyd LJ held that, based on the previous case law:
"an undertaking which seeks to establish goodwill in relation to a mark for goods cannot do so, however great may be the reputation of his mark in the UK, unless it has customers among the general public in the UK for those products."
Although Plentyoffish had argued that the decision was simply wrong, the court considered that it was bound by it - although a cynic might say that, as it did in its treatment of BBC v. Talbot (one of Plentyoffish's other arguments), if the court had wished to distinguish the case, it could have done so.
Plentyoffish's arguments about the creation of advertising revenue by UK visitors was pretty innovative, though, but, perhaps not unsurprisingly, it failed since it really does not go to the heart of whether there was goodwill in the UK - the court held that there "still has to be some provision of the services in question."
Could the location of contracting have helped the court find in favour of Plentyoffish? Possibly, if this would mean that it had a customer in the UK, but I would have thought that a UK-based customer contracting under any other law would have been just as useful to the company. Similarly, a customer based in - say - Kenya, but contracting with Plentyoffish under English law, would be insufficient to establish goodwill, since it would still be a customer in Kenya, and not in the UK.