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Showing posts from October, 2011

Fishy! The Problem of Foreign Goodwill in the Context of the Internet

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In PlentymoreFirsh BL 0/029/11 (1 Feb 2011), the hearing office Mr. David Landau dismissed an application by Plentyoffish Media Inc. for the invalidation of UK trade mark number 2,453,920. The mark had been registered for dating services in class 47 with effect from 27 April 2007. The application was brought under s.47 of the Trade Marks Act 1994 on the ground that the applicant had an "earlier right" within the meaning of s.5 (4) of the Act. The applicant contended that it had run one of the world's largest on-line dating services under the sign "PLENTYOFFISH" since 2001.
The hearing officer dismissed the application on the ground that the applicant was unable to prove that it had goodwill in the UK as at the date of application for the mark."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 th…