U.S. Company Had No U.K. Trademark Rights Because It Had No U.K. Customers, Holds High Court of England & Wales

The High Court of England and Wales held that a foreign company that has a reputation but no actual customers in the United Kingdom does not possess the goodwill necessary to create enforceable trademark rights under the UK law of “passing off.” Plentyoffish Media Inc. v. Plenty More, LLC [2011] EWHC 2568 (Ch). The foreign company, a U.S.-based online dating company, claimed rights in the unregistered mark PLENTYOFFISH under the law regarding passing off. The court found that even though many visitors to the company’s website were from the UK, this fact did not confer upon the company any UK trademark rights in the mark, because there was no proof that the company had any actual customers in Britain. The site was funded by advertising, and the company offered its services free of charge to registered users. The court “accept[ed] that the concept of ‘customers’ required by the English cases must include the people to whom the relevant services are actually provided even if, in a case like this, they receive the services for free.” However, the missing essential element for the U.S. company was that it could not demonstrate that it actually provided dating services to persons in the UK. The court explained that,

A reputation in the UK is not sufficient, customers in the UK are required and that is so whether the business provides products or services. Deciding who constitutes a UK customer from the point of view of a services business may involve tricky questions in some cases but as a matter of law … customers of some kind are required.

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