Wow, a dating site that specialises in offish people. There's a niche. Still, I guess even unfriendly people have to breed.
The High Court rejected claims made by US online dating company Plentyoffish Media that it was entitled to assert rights over UK-registered trademarks because it had high UK visitor numbers to its website. Justice Birss QC said that because Plentyoffish Media did not have any customers in the UK it did not own any "goodwill" …
I reckon the holder of plentyoffish.com was just pissed he's got a crap domain. 'Plenty more fish' (12 million google hits) is by far the more commonly used idiom than 'plenty of fish' (695k google hits), plus that double f looks really gash, given offish is a real word (inclined to be distant.. aloof...) that the eye will naturally tend to parse. Plenty offish? Not really the kinda connotation you want from a dating site. Good on our judges for seeing through and rejecting his attempt to grab the better domain name...
I think I agree with the decision, but I wonder how this applies to companies that rely solely on advertising.
Is it then the company paying for advertising that is the "customer" of the website so they would have been able to claim goodwill if one of the companies advertsing on it's site was British?
Then how does that apply to Advertising Companies which stream adverts to sites, is the Advertising Company the customer, or are customers of the Advertising company then considered customers?
Consider a US based search engine, in a hypothetical scenario, it's widely used in the UK, but it only streams adverts which are paid for by an advertising company also based in the US. There may or may not be customers of that advertising company who are UK based.
Could the US based search engine assert rights over a UK registered trademark? By this ruling I would assume not.
Holy Cow - way to bury the lede, lawyers.
Isn't the interesting bit of this decision that finding that you need trade ("custom") in the UK to have a trademark protected in the UK, and the questions it raises around certain online companies where traditional models of consumers paying for goods or services aren't exactly appropriate?
I guess since you don't pay to watch ITV (unless you are a Sky slave), then I can use ITV as a trademark too?
Who says that you have to charge person "a" for a service you provide, for person "a" to be a customer/client?
However, if you just failed to click the joke icon, I like your idea :)
Well the finding is more that you need UK customers in order to have an *unregistered* trademark protected in the UK. As his holiness said, if you have the foresight to register your trademark, it's a done deal. This is about someone claiming that an unregistered trademark with no trade trumps a registered one, which is a very shaky argument.
In any case, this is a website which *does* charge people, so if they have no charges on UK accounts prior to 2007 it's pretty obvious they did no trade here. Sites which *don't* charge people, but make money from ads, could presumably point to ad clicks from the UK as proof of trade.
However, this does seem to open the door for some predatory stealing of reputation, if not "good will" per se, by large companies copying small companies' names in territories where they have no trademark and no trade, but where people have heard of them. So in that sense, the ruling is rather curious, and seems to be aimed at protectionism of UK interests over any idea of global justice per se. OTOH this seems like a genuine fight between two companies who in fact just happened to choose similar names, so maybe that's not a fair comment.
Yes - you're right about the "unregistered" bit, that's very important.
"Sites which *don't* charge people, but make money from ads, could presumably point to ad clicks from the UK as proof of trade."
That's a big presumably, though. Where is the trade really taking place - within the UK because the person clicking is in the UK or outside the UK because (hypothetically) that's where the advertiser and the site are? What about when third party ads are just displayed without clicks?
What about when the service is provided without any signing up? For example, plenty of comedy podcasts are streamed free and without signup because the comedians hope that you'll eventually go and see them in person or buy their (digital) albums from iTunes. If Louis CK or Marc Maron lets me listen to their podcast free and I don't have to sign up, would I be a customer or not?
How about if I'm a professional services firm that has a specially-branded comment website that is designed to raise my firm's profile so that one day someone might buy some professional services from me? (You know, like Pinsent Masons and outlaw). Are the people who read my analyses customers?
These are all interesting questions that it would have been useful to have an informed lawyer with experience in the market discuss...
From the sound of this, plentyoffish has no registered UK visitors at all, and therefore (by this ruling) no customers in the UK. Is this correct? Can you only register with the site if you are in the US or something? I'm sure I know some people who have registered with this site - no - not me :-)
...but when I started my on-line business some years back, I applied for, and got, a registered trademark long before I even opened-up shop. I had no customers at all then; didn't have any bearing on the trademark application though (though I do know that if you don't then use the mark, you are likely to loose it).
In terms of a properly free dating site, PlentyofFish has been surveyed to be number one. A cursory view at the number of users will also show that this is true at least in the UK and US.
The only significant competition I can think of are OKCupid (worldwide) and Smooch (UK). There are other sites that are primarily or generally free, but unless they're not UK/US I'm not aware of them (with the possible exception of some kink sites that can be used for dating)
Of course, plentyoffish is a fairly crappy site which makes most of its money from advertising other dating sites
There's an awful lot of users on there if you're going for quantity over quality, though..
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