Trade Mark goodwill in the UK

The question of demonstrating goodwill arose before the High Court in relation to an invalidity action based on Section 5(4)(a) Trade Marks Act 1994 which provides that a trade mark may not be registered, and so is open to an allegation of invalidity, if its use in the United Kingdom would be liable to be prevented by any rule of law and, in particular, the law of passing off.

Since 2001 a Canadian company Plentyoffish Media Inc. operated a successful online dating agency under the name Plentyoffish from its website plentyoffish.com. A UK company Plenty More LLP also operated an online dating agency from its website plentymorefish.com and had obtained a UK trade mark registration including "dating agency services" for PLENTYMOREFISH and as derived from an application filed 27 April 2007.

Plentyoffish applied to invalidate the registration on the basis that use of the registered mark constituted passing off. In order to illustrate goodwill to support the invalidity action Plentyoffish provided evidence concerning the popularity of its dating website in the United Kingdom. However, the evidence failed to give details of members, customers or revenue in the United Kingdom and it was also noted that United Kingdom visitors to the site could not become members of the service at the relevant time (the filing date of the registration).

Plentyoffish had argued that the large number of hits or visits to its website satisfied the requirement for goodwill and that goodwill in a product or service could arise without the need for actual customers.

The Court however did not agree and upheld the registration confirming that an undertaking which seeks to establish goodwill in relation to a mark for products cannot do so, however great the reputation of the mark in the UK may be, unless it has customers among the public in the UK for those products.

This decision confirms that actual customers in the UK are necessary condition to establish goodwill for the purposes of passing off, whether the business provides products or services, and irrespective of whether its services are provided for free.