Plentyoffish Media Inc. v Plenty More Llp

This is an appeal from the decision of David Landau for the Registrar the Comptroller-General dated 1^st February 2011. Mr Michael Edenborough QC appears for the Appellant instructed by Alexander Ramage Associates and Ms Fiona Clark appears for the Respondent instructed by Ladas & Parry LLP.

The decision under appeal dealt with an application by Plentyoffish Media Inc (the Appellant) for a declaration of invalidity of UK Registered trade mark No 2 453 920 in class 45 under section 47 of the Trade Marks Act 1994. A representation of the mark is:

The mark was registered for:

agency services (Dating-); computer dating services; dating agency services; dating services.

The mark had been applied for by AT New Media Ltd on 27^th April 2007. The registration process was completed on 12^th October 2007. The trade mark has been assigned twice. It is currently in the name of Plenty More LLP (the Respondent).

Before Mr Landau the Appellant relied on s5(4)(a) of the 1994 Act. The relevant sub-section states:

(4)

A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented -

(a)

by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade.

This sub-section corresponds to Art 8(4) of Council Regulation 207/2009.

The question is whether the use of the mark is liable to be prevented by the law of passing off. The essentials of the law of passing off were common ground. They can be taken from the summary given by Lord Oliver in the Jif Lemon case Reckitt & Colman Products Ltd v. Borden Inc [1990] RPC 341 at page 406:

The law of passing off can be summarised in one short, general proposition: no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying 'get-up' (whether it consists simply of a brand name or trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. ... Thirdly he must demonstrate that he suffers, or in a quia timetaction that he is likely to suffer, damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff.

The Appellant contended that at the relevant time it had the right to prevent the use of the trade mark as a result of its common law rights in passing off. The Appellant’s case was that it had acquired a goodwill in the United Kingdom in the sign “Plenty of Fish” (and “plentyoffish” and “plentyoffish.com”), that using the mark complained of would cause a misrepresentation and that damage would be suffered or would be likely to arise.

The Appellant apparently runs one of the largest online dating services in the world. It claims to have operated an online dating service under the name PLENTYOFFISH since 2001 at a website whose url is plentyoffish.com. The site is claimed to be the second most viewed dating website in the United Kingdom and one of the 150 most visited websites of any kind in the United Kingdom. The Appellant’s dating services are provided to people who join the website (members) but there is no charge to join and the services are free for members to use. The site is funded by online advertising.

The Appellant’s case is that the Respondent started an online dating agency PLENTYMOREFISH at plentymorefish.com in about September 2006. The Respondent’s service is apparently funded by consumer payments via their credit cards. The Appellant contends that there have been instances of confusion between the two services and that customers have registered with the service operated by the Respondent in the belief that it was a free service operated by the Appellant and have then complained when a sum of money was debited from their credit card.

Before the Registry the Respondent did not deny operating a dating agency from plentymorefish.com but denied (or put to proof) the rest of the Appellant’s case. Evidence was exchanged consisting of statements from Marcus Frind, the founder and CEO of the Appellant, and a statement from Stephen Moylan, a member of the Respondent. Mr Landau analysed and summarised the evidence submitted and neither side makes any criticism of Mr Landau’s analysis of the evidence.

The issue on which this case turns is whether the Appellant has established the necessary goodwill. The date on which Mr Landau assessed the Appellant’s goodwill was 27th April 2007, i.e. the date on which the mark was applied for. This was taken to be the relevant date based on the judgment of the General Court in Last Minute Network v OHIM joined cases T-114/07 and T/115/07. There is a potential dispute about that point; Ms Clark submits it should be an earlier date, relying on the Pub Squash case (Cadbury Schweppes v Pub Squash [1981] RPC 429) but the date issue only arises if Mr Edenborough succeeds in his primary submissions. I will consider the date point later only if it is necessary to do so.

Mr Landau dismissed the application. He held that that s5(4)(a) ground was not made out because he held that the Appellant had no goodwill in the UK on the relevant date. Mr Landau held that no goodwill had been established because despite the evidence of hits or visits to the website from the UK, the Appellant had not shown that it actually had any customers or business in the UK at the relevant time. The nub of his decision is in paragraphs 28 to 30 as follows:

“28)

There is no need for a business to be based in the United Kingdom to have goodwill in this jurisdiction. There is nothing to stop a website based in Canada having a goodwill in relation to a dating business in the United Kingdom, if it has customers here. In 800-Flowers Trade Mark [2000] FSR 697 Jacob J stated:

‘I questioned this with an example: a fishmonger in Bootle who put his wares and prices on his own website, for instance, for local delivery can hardly be said to be trying to sell the fish to the whole world or even the whole country. And if any web surfer in some other country happens upon the website he will simply say “this is not for me” and move on. For trade mark laws to intrude where a website owner is not intending to address the world but only a local clientele and where anyone seeing the site would so understand him would be absurd. So I think that the mere fact that websites can be accessed anywhere in the world does not mean, for trade mark purposes, that the law should regard them as being used everywhere in the world. It all depends upon the circumstances, particularly the intention of the website owner and what the reader will understand if he assesses the site.’

A dating website is not on a par with a fishmonger in Bootle but the issue of the clientele is still the same. However, there is no evidence that prior to 27 April 2007 the visitors from the United Kingdom to the website could even be members. The nature of [the Appellant’s] business is such that data as to the number and location of its members/customers should be readily available. Mr Frind gives a large amount of detail about hits on his website from the United Kingdom but signally fails to give any details of members/customers and/or revenue from the United Kingdom. He does not identify one member/customer from the United Kingdom prior to 27 April 2007. [The Appellant] has to establish a goodwill. Mr Edenborough submitted that it would be perverse to find that there was no goodwill when there were so many hits on Inc’s website from the United Kingdom. He was specifically asked to identify a legal precedent in the United Kingdom which did not require customers/business within the jurisdiction to establish goodwill. He could not. The legal precedents, as rehearsed above, are clear; customers are required, whether they be described as customers or members.

29)

A web based business should be able to readily access details of members/customers by reference to location, date and number. [The Appellant] gives no details of any members/customers or advertisers from the United Kingdom at all, let alone prior to 27 April 2007. Inc has not established a goodwill prior to 27 April 2007 and so its application must be dismissed.

30)

The absence of members/customers from the United Kingdom is startling, taking into account the nature of the claims and the nature of the business. It is not just that [the Appellant] has failed to establish goodwill and so its application must fail, the reasonable inference that can be drawn from the absence of evidence is that [the Appellant] did not have any members/customers in the United Kingdom prior to 27 April 2007. It is noted that [the Appellant] filed three rounds of evidence and so had plenty of opportunity in relation to this matter. It is also very surprising that rather than supplying data of visits to its website directly, which could identify such things as unique visitors, time spent on the website, pages interrogated and location of the visitor, [the Appellant] has relied upon third party calculations.”

The appeal concerns a short point of law. Mr Edenborough does not dispute that Mr Landau was entitled to find that the Appellant had no members in the UK at the relevant time. But his first submission is that the law does not require customers in this context and so Mr Landau erred in law. Second Mr Edenborough submits that what is required is a “trade connection” and that that is satisfied in this case by the large number of hits or visits to his client’s website from the UK at the relevant time. Third Mr Edenborough submits that viewed correctly the UK visitors to the website should be regarded as customers in any event despite the fact that there is no evidence they were members.

Mr Edenborough submitted that the error of law by Mr Landau can be seen in paragraph 15 of his decision in which he considered the judgment of Sir Nicholas Browne-Wilkinson VC in Pete Waterman Ltd v CBS United Kingdom [1993] EMLR 27. Paragraph 15 is as follows:

“15)

In Pete Waterman Ltd v CBS United Kingdom Ltd [1993] EMLR 27 Sir Nicolas Browne-Wilkinson VC stated:

“A.

As a matter of principle, the existence of a severable English goodwill attached to a place of business in this country is not the basis of a right to complain of passing-off in this country. What is necessary is for the plaintiffs to show they have a trade connection here which will normally consist of customers forming part of their goodwill, wherever that goodwill is situate, which goodwill is being invaded by the acts of the defendant in this country;

B.

The approach which I have set out at A above is not open to me as there is binding authority to the effect that the basis of the plaintiff’s claim must be a goodwill locally situate in England; but

C.

The presence of customers in this country is sufficient to constitute the carrying on of business here whether or not there is otherwise a place of business here and whether or not the services are provided here. Once it is found that there are customers, it is open to find that there is business here to which the local goodwill is attached;

D To the extent that the Crazy Horse case is authority to the contrary, I prefer not to follow it.”

The judgment of the Vice-Chancellor makes it clear that it is necessary to have customers in the jurisdiction ⁱⁱ.”

The footnote reference (ⁱⁱ) at the end of the paragraph is to Amway Corp v Eurway International Ltd [1073] FSR 213 and Athlete’s Foot Marketing Associates Inc v Cobra Sports Ltd [1980] RPC 343.

Mr Edenborough submits that although in sub-paragraph C of cited passage the learned Vice Chancellor stated that the presence of customers would be sufficient to constitute goodwill, Mr Landau has mistaken a sufficient condition for a necessary condition and so fallen into error. Customers would be sufficient but a lack of customers is not fatal. They are not necessary. What is necessary, he submits, is a trade connection such as referred to in sub-paragraph A.

Mr Edenborough refers to the classic statement of Lord MacNaghten in IRC v Muller & Co’s Margarine [1901] AC 217 which considers the nature of goodwill:

So, referring to the famous expression “It is attractive force which brings in custom” Mr Edenborough submits that his client’s website, with its numerous visitors from the UK as at 2007 (a figure of 4 million is in evidence), had the benefit of an attractive force bringing in people to the site, even if it had no actual customers here. Such an “attractive force” represents the presence of goodwill and so, he submits, the relevant test is satisfied.

Mr Edenborough also relies on the decision of David Kitchin QC (as he then was) sitting as the Appointed Person in HOUSE DOCTOR case O-242-04 of 5th August 2004. He submits that paragraph 16 of this decision involved a finding that an applicant for a declaration of invalidity, in similar circumstances to the Appellant in this case, had established the presence of goodwill despite an absence of actual customers. All the applicant (Ann Maurice) had shown was that she had appeared as presenter in seven editions of a television programme called HOUSE DOCTOR by the relevant date. The programme involved her giving advice on interior design and the like and this, with its associated publicity, was sufficient to establish a goodwill.

Finally Mr Edenborough relies on the judgment of Sir Robert Megarry VC in BBC v Talbot [1981] FSR 228 in which the BBC were held to have acquired a protectable goodwill in the mark CARFAX relating to a system for receiving traffic information on the radio, even though the system had not been launched, as a result of its widespread promotion such as its appearance on the BBC’s “Top Gear” programme in March 1980. So, as with HOUSE DOCTOR, Mr Edenborough submits that this case is an example of the acquisition of a goodwill without the necessity for any customers.

Ms Clark’s submissions are to the contrary. She contends that it is well established that in the case of a foreign claimant, the relevant goodwill is a UK goodwill, that a distinction has to be drawn between goodwill and reputation and that a mark may be known to the public in the UK but that is not enough to found the cause of action. She submits that in Hotel Cipriani v Cipriani (Grosvenor Street) Ltd [2010] RPC 16 the Court of Appeal held that customers were required. As regards the decision of Browne-Wilkinson VC, she submits that Mr Landau made no error at all. As for HOUSE DOCTOR, Ms Clark submits that Ann Maurice had a business in the UK, the only question was whether she had established a reputation in the name HOUSE DOCTOR in connection with that business and so the point at issue did not arise. Equally as regards BBC v Talbot Ms Clark submits the BBC had a business here and the only issue was whether it had attached a reputation in CARFAX to that business, thereby giving rise to a goodwill.

The problem of a foreign business seeking to rely on the law of passing off when it has some sort of reputation in the UK but no local goodwill is a well known one. The English approach of requiring such a local goodwill and not just a reputation has attracted some controversy. It has been called the Crazy Horse problem after Alain Bernardin v Pavilion Properties [1967] RPC 581, in which Pennycuick J refused to allow the proprietors of the Crazy Horse Saloon in Paris to restrain a business in London from using the same name. The claimant had publicised its business extensively in the UK but carried on no other activities here. They had no local goodwill. They failed. In the Pete Waterman case itself the Vice Chancellor dealt with the authorities on this issue in some detail. The propositions A to D set out above were his conclusions arising from that review. In the Hotel Cipriani case the question arose again. The context in which the issue arose related to a business physically performing the services in question abroad but taking bookings from customers here. At first instance Arnold J addressed this issue in paragraphs 210 - 224 of his judgment. I was referred to that passage. The Court of Appeal dismissed the appeal. Lloyd LJ (with whom Stanley Burnton and Jacob LJJ agreed) considered the matter in detail from paragraphs 94 to 121. I was referred to that passage too. In it Lloyd LJ deals with all the relevant authorities including IRC v Muller, the Crazy Horse case, the Pete Waterman case and importantly the Budweiser case (Anheuser-Busch v Budejovicky Budvar [1984] FSR 413 (CA)).

In paragraph 106 of his judgment Lloyd LJ stated his conclusions about the Budweiser case as follows:

“It seems to me that, given the agreement between Oliver and Dillon LJJ, the case is authority for the proposition that 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. To that extent the case is binding on us.”

Mr Edenborough submitted that this conclusion was “just wrong”, flatly contrary to BBC v Talbot and not supported by Budweiser. I will deal with BBC v Talbot below. As regards Budweiser, Mr Edenborough submitted that paragraph 103 of Lloyd LJ’s judgment in Hotel Cipriani, which considered Budweiser, did not support the conclusion in paragraph 106. It seems to me that I am bound by paragraph 106 of Hotel Cipriani in any event but (if I may say so) it also seems to me that the conclusion follows from the reasoning before it, including paragraph 103 of the judgment.

Lloyd LJ then went on to deal with the criticisms which have been levelled at this approach from various sources but held that the Court of Appeal was bound by the ratio of Budweiser.

Since the Budweiser case related to a business selling beer, it was necessary for Lloyd LJ to consider how the law applied to a business providing services. The Pete Watermancase itself was concerned with a recording studio in New York called the Hit Factory and customers in England. One of the detailed questions arising by comparison with the facts of the Hotel Cipriani case related to the difference between a foreign services business with customers in the UK whether or not their business was placed directly from this country (the Hit Factory) and a foreign business with bookings made directly from the UK (the Hotel Cipriani). In paragraphs 117 - 118 Lloyd LJ declined to state a general proposition as regards foreign service providers. However he made it abundantly clear that custom or customers of some kind were necessary. Thus a substantial English reputation coupled with a substantial body of customers from England sufficed for the claimant’s hotel (paragraph 118) whereas a slight reputation in England coupled with no significant English custom did not suffice for the defendant’s restaurant (paragraph 120).

In my judgment Ms Clark’s submission is correct. 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 in my judgment customers of some kind are required. Thus Mr Landau applied the right test when he sought customers (or a business) within this jurisdiction.

Mr Edenborough’s attractive submission based on IRC v Muller (in referring to the force which brings in custom) must be treated with care since it elides the existence of a reputation - which might well be capable of providing an attractive force - with a business to which the reputation must attach. It is clear on the authorities that a reputation alone is not sufficient.

What of the HOUSE DOCTORcase? The Decision of David Kitchin QC is not referred to in Hotel Ciprianieither at first instance or on appeal nor does the Decision refer to any of the long line of authorities on the issue before me (with the exception of a brief citation of IRC v Muller inside a quotation from County Sound v Ocean Sound [1991] FSR 367 at paragraph 13). In my judgment the reason for this is that HOUSE DOCTOR has nothing to do with the case before me. There is nothing in the Decision to indicate that the case was concerned with a business operating abroad at all. It is true that the applicant, Ann Maurice, was described as a “Californian estate agent” in the publicity material associated with the television programme in question (see decision paragraph 16) but that does not mean that Ann Maurice did not have a business in the United Kingdom. Paragraphs 4 and 5 of the Decision simply state as follows:

“4.

Ann Maurice is, by background, a property agent, interior designer and what she has described as a “home stager”, by which I understand her to mean that she advises on the design, layout and presentation of homes.

5.

In the early 1998 Ann Maurice was approached by a production company called Talkback Productions to participate in a television programme in which she was to act as a home stager and provide advice to home owners on methods and means of improving their properties with a view to securing higher market values. The advice was to be on all aspects of interior design and layout, exterior design and layout, decorations, hard and soft furnishings and gardening.”

In my judgment paragraphs 4 and 5 are referring to activities in the UK since they do not say otherwise. Thus since Ann Maurice had a business in the UK albeit not one (as yet) associated with the name in dispute, the only question was whether she had acquired any protectable reputation and goodwill in the trade mark HOUSE DOCTOR by the relevant date. There was no problem of a lack of a UK business to attach the reputation to, it was simply a question of association. Hence it is in this context that paragraph 16, which Mr Edenborough relies on, must be seen. In paragraph 16 the Appointed Person said:

“16.

Further, I have come to the conclusion that there was sufficient evidence to enable the Hearing Officer properly to come to the conclusion that Ann Maurice had acquired a protectable goodwill by the 12^thJune 1999. In particular, I have in mind the following matters. First, by that date, seven HOUSE DOCTOR programmes had been shown. They all featured Ann Maurice as the, or at least the principal, HOUSE DOCTOR. They attracted an audience of up to a million viewers. That constitutes a significant proportion of the public. Secondly, the original series was promoted by a number of TV listings which also made it clear that Ann Maurice was the HOUSE DOCTOR presenting the programmes. The listings described the nature of the programmes and explained that Ann Maurice is a Californian estate agent and an expert in the art of making properties look their best, with a view to achieving a good and quick sale. Thirdly, I believe that the impact that the first series had is evident from the publicity attaching to the second series. As indicated, this was broadcast from the 13^thJuly 1999 and it attracted a good deal of publicity which referred back to the first HOUSE DOCTOR series and to Ann Maurice as the presenter of those programmes. In my view this material, taken as a whole, is sufficient to establish that Ann Maurice had a goodwill and reputation in the trade mark HOUSE DOCTOR as at the relevant date.”

Taken out of context this paragraph might appear to assist the Appellant in the case before me but, seen in the context of the decision as a whole, it does not. In my judgment it is simply an orthodox application of the law in circumstances where no question of location of the business or goodwill arose. The issue was whether the reputation and goodwill of the name attached to the existing business as a result of the publicity associated with the television programme.

As regards BBC v Talbot, in my judgment Ms Clark is correct. One can see the parallel between that case, in which publicity generated before the actual service starts can be said to have given rise to a goodwill even though there are no customers, and a case like this one, in which the Appellant argues that publicity has given rise to goodwill even though there are no customers in the UK. However the cases are not the same. The BBC already had a business in the UK at all material times. No question of location arose. The public who heard the publicity about CARFAX knew the name to be distinctive of the BBC’s service. The goodwill attached to a business situated in the UK. The line of cases ending in Hotel Ciprianiinvolve a different problem - no business in the UK at all. In my judgment BBC v Talbot does not assist the Appellant and is not in conflict with Hotel Cipriani.

Mr Edenborough’s second submission, about a “trade connection” with the UK as opposed to actual customers here, only arises if his first point succeeds. However I have rejected the first point. I note that the argument is based on point A of the Vice Chancellor’s judgment in the Pete Waterman case but it ignores point B. In point B the Vice Chancellor makes it clear that although, if it were free from authority, he would find that a trade connection was the key to the matter regardless of where the goodwill was situated, that was not an approach which was open to him on the authorities.

Thus in my judgment Mr Landau took the correct approach in this case in that he held it was necessary for the Appellant to show that it had customers in the UK at the relevant time. He held that all the evidence showed was that people from the UK had visited the Appellant’s website by the relevant date but there was no evidence any of them had become members and thus no evidence of UK customers.

This leaves Mr Edenborough’s third submission, which seeks to avoid the consequences of the lack of any evidence of UK members by relying on the UK visitors to the site regardless of their status as members. The argument is based on the Appellant’s mode of doing business. The Appellant’s business works by providing the dating agency service to members for free while the business earns an income from advertising. He submitted that “customers” must include the people to whom the dating service is provided regardless of the fact that they receive the service for free. The fact that the only entities who pay money to the Appellant are advertisers did not mean that the only customers were advertisers. Thus he argued that since the Appellant’s business as a whole works by earning money from advertising and since visitors from the UK to the website will be exposed to the advertising whether or not they have joined the site as members and availed themselves of the dating services, in this extended sense the UK visitors are to be regarded as customers of the web based business because the business earns revenue (from advertisers) as a result of their visits.

I will deal with Mr Edenborough’s submission in a series of steps. First, I accept 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. If the Appellant had been able to show that it had indeed provided dating services to people in the UK, the fact that the people had not been charged for that service seems to me to be irrelevant. The Appellant’s problem is that it has not proved any such thing.

However the second step in the reasoning needs to be treated carefully. The evidence did not set out to establish that visitors from the UK to the website were exposed to advertising whether or not they had joined the site as members and availed themselves of the dating services. The best that Mr Edenborough could do on the evidence was refer to a screen print of a page from the site as it was on 30th January 2003. The screen print appeared to show what would be presented to a visitor even if they were not a member. The page shows a list of users of the dating agency service and it is notable that their locations are all outside the United Kingdom. However Mr Edenborough’s point related to a banner promoting another website called FriendFinder.com which was at the top of the webpage. Mr Edenborough submitted that this was an example of an advertisement, from which the Appellant earned revenue, being presented so as to be visible to visitors (including those from the UK) regardless of whether they were members or not. Ms Clark did not accept that this was truly an advertisement from a third party (why would a third party dating service advertise on a dating service site) rather than just a promotion of a related service provided by the Appellant or someone associated with it. Mr Frind’s evidence did not deal with the point at all. I am not convinced that Mr Edenborough is right about what is shown on the screen print but it is unnecessary for me to resolve the issue because it seems to me the third step in Mr Edenborough’s reasoning is flawed in any event.

Mr Edenborough’s third step is to equate visitors from the UK with “customers”, even if they have not joined the site, simply because the business earns revenue from advertisers as a result of their visits or “hits”. Even if it is correct in fact that such visits earn revenue for the business (and I am not convinced the evidence makes that good) the real problem is that the argument has lost touch with what the case is about. This is a trade mark case about a sign used in relation to a particular class of product or (in this case) service. It seems to me that for a member of the public to be a customer, no matter how far that concept is stretched, there still has to be some sort of provision of the services in question. The Appellant is not seeking to invalidate a trade mark registered for advertising services nor is the Appellant claiming a goodwill or reputation in advertising. This case is about dating agencies. The Appellant’s problem is that it has not shown that it provided any dating agency services to anyone in the UK on or before April 2007. As Mr Landau found, there is no evidence that before that date visitors from the UK could even become members. Mr Edenborough sought to side step that finding by submitting that there was no evidence that visitors could not become members and pointed to the large number of UK hits. However the evidence on this issue, as Mr Landau observed, should have been readily available to the Appellant, yet they did not provide it. In my judgment Mr Landau was entitled to draw the inference he did against the Appellant.

Assuming in the Appellant’s favour that it had a reputation in the UK associated with dating in April 2007, nonetheless there was no evidence it had provided any dating services to anyone in the UK by that date. The fact that it could earn money from its reputation seems to me to be irrelevant (even if that were established on the evidence).

Thus I reject Mr Edenborough’s final submission. In this case the only class of people who could be customers of the Appellant’s business in the relevant sense were the members, the people who joined the site and used the dating services. There was no evidence that any such people existed in the UK in April 2007. Mr Landau’s decision was right.

The appeal will be dismissed.