Date: 1 October 2018
The value of trade mark registration cannot be underestimated. Unless it is registered as a trade mark, there is no monopoly in a brand name and thus the heavy burden remains on a claimant wishing to establish a claim in passing off to establish goodwill and reputation, in addition to proving misrepresentation and damage.
There is little doubt that this can quickly become an expensive and time consuming exercise, which is heavily brought into focus given that recoverable costs for cases brought in the IPEC are subject to an overall cap of £50,000. In Henry Martinez t/a Prick v Prick Me Baby One More Time Ltd t/a Prick  EWHC 776 (IPEC), the Intellectual Property Enterprise Court dismissed a passing off claim brought by Amy Winehouse’s tattooist, Henry Martinez, who traded under the name 'Prick', against a cactus shop which traded under the same name in the same locality.
Henry Martinez, a tattoo artist professionally known as “Henry Hate”, has run a tattoo and piercing parlour in Shoreditch called Prick Tattoos since 2001. He is well known as a tattoo artist and he has had a number of celebrity customers, most famously Amy Winehouse for whom he created the iconic “Cynthia” tattoo on the singer's right upper arm.
Mr Martinez, and the company through which he runs his tattoo parlour, the second claimant Henry Hate Studio and Prick Tattoo Parlour Ltd, have also negotiated and entered into commercial deals with third parties for wider visual art works, for example collaborating with Fred Perry to design a tattoo-like applique for a shirt produced with the Amy Winehouse Foundation. Mr Martinez, as “Henry Hate”, also sells and exhibits artistic works on media other than skin.
The defendants, Ms Gynelle Leon and her company Prick Me Baby One More Time Ltd, have run a cactus and succulent plant shop called “Prick” in Dalston since July 2016. The name “PRICK” appears on the outside of the shop only, painted in all-black serif script on the glass of the shop window and also in black on a small white sign jutting out from the far end of the fascia board. The defendants also have a website under the URL prickldn.com which is the domain also used for business emails. They also operate a number of social media accounts incorporating the handle “prickldn”.
According to the claimants, the defendants’ use of the word “PRICK” amounted to passing off. The issues for the court were: (i) whether the claimants’ goodwill associated with signs incorporating the word “PRICK” extended beyond the provision of tattooing and piercing services supplied from the tattoo parlour, and if so, to what extent; and (ii) whether the use of that word by the defendants amounted to a material misrepresentation that the goods or services offered by them were those of the claimants or were somehow authorised by or connected with the claimants.
However, on the evidence, there was no material misrepresentation by the cactus shop that the goods and services it offered were somehow authorised by or connected with Mr Martinez or his company. Her Honour Judge Melissa Clarke agreed with the defendants that it was hard to imagine two businesses with two less closely related activities and, taking into account dissimilarities in their respective get-ups, found that the claimants had failed to discharge the burden of proving that a substantial number of consumers would be deceived into thinking that the businesses were connected.
In relation to the “allusive nature” of the pun inherent in the use of the word “PRICK” for the two businesses, the judge considered that rather than assuming there was a connection between the businesses in that the name had been chosen for that purpose, the public was more likely to come very quickly to an appreciation that the name referred to the specific properties of a cactus or tattooing, as the case may be, appreciate the humour, and so not go on to assume that there was any such connection.
While not everyone’s first choice as a name to trade under, “PRICK” is undoubtedly distinctive. Mr Martinez, whose reputation as an artist was not disputed, may feel rather aggrieved that he has to share the name with a plant shop just around the corner. But while there was no doubting that the tattoo parlour’s goodwill, albeit local, was sufficient to bring a passing off claim, parts two and three of the classic trinity presented the claimants with a significant evidential burden in circumstances where the respective business get-ups were poles apart and where the issue before the court was whether a material misrepresentation had been made. The dissimilarities in get-up were highly important to whether there was a material misrepresentation. Additionally, whilst there was no requirement for the claimants to show a common field of activity or trade, as noted above, the judge accepted that the commonality of the parties’ respective fields of activity was material to the issue of likelihood of confusion.
There was some evidence of confusion, one woman managing to land on Mr Martinez’s website at henryhate.com when looking for a cactus, but for the judge this was a question of mere confusion rather than deception. The evidence of another woman, who mistakenly left a five star review of her tattoo on the cactus shop website, was dismissed as that of “a moron in a hurry”. This is a reminder to gather and present quality evidence which extends beyond “a moron in a hurry” or mere confusion as, although misrepresentation can still be found where there is no evidence of confusion, misrepresentation must be calculated to deceive. Interestingly, the judge all but dismissed the evidence of several witnesses for the claimants on the point of deception as they were not consumers in the sense that they were not ordinary members of the public who were in the market for the claimants’ goods and services. Most notably they were all closely connected with the claimants and had particular personal knowledge of Mr Martinez.
But even if the claimants had proof of deception, which they did not, this would have to equate to material misrepresentation, to prove any damage. Although the judge did not deal with the issue of damage in any detail, she did allude to it insofar as she found that the one instance of deception (of itself insufficient to establish deception of a substantial number of consumers) could not damage the claimants’ goodwill. It was “inherently likely” that a person seeking a tattoo who came across a cactus shop would be told that it was a cactus shop and then go to the tattoo parlour instead, without any damage being caused to the claimants’ goodwill. The unsatisfactory aspect of this logic, however, is that a certain amount of free riding, albeit unintentionally, on a locally well-known brand of a different kind of business may have to be tolerated by the owner of the goodwill in that brand.
Notably, both parties obtained registered UK trade marks in 2016 for the word “PRICK”. Mr Martinez has registered the word “PRICK” and a stylised word mark, in classes 2, 8 and 44. Meanwhile Prick Me Baby One More Time Ltd has registered the word “PRICK” and a logo incorporating the word in classes 21 and 31. The case appears to be settled for now. Meanwhile, though, it seems safe to say Mr Martinez’s prickly neighbour will remain a thorn in his side for some time to come.