England & Wales High Court - 11 April 2018

​This article first appeared in Intellectual Property Magazine in May 2018

This very interesting case filled with innuendos and double meanings concerning a dispute over the use of the word “prick” shows how important the process of gathering evidence is in order to succeed in passing off claims. It also illustrates how overzealous witnesses trying to elaborate their evidence in order better to support a case could be, in fact, a kiss of death for such a case.

Background

The claimant, Henry Martinez, is a tattoo artist professionally known as Henry Hate who operates a tattoo and piercing parlour in Shoreditch called Prick Tattoos. He is known for some of his high-profile clients, such as Amy Winehouse, Boy George, Pete Doherty and Alexander McQueen. He also has an artist’s studio in Bermondsey where he produces other artistic works under the same professional name. The defendant, Gynelle Leon, is the sole director and shareholder of a company called Prick Me Baby One More Time through which she opened a cactus and succulent plant shop called Prick in Dalston. The dispute between the parties arose over the use of the word ‘prick’ by both businesses with the claimant arguing that the use by the defendant amounted to passing off.

Two main issues revolved around the question whether the claimant’s goodwill associated with signs incorporating the word ‘prick’ extended beyond the provision of tattooing and piercing services and whether use of the word ‘prick’ by the defendant amounted to a material misrepresentation that the goods and services offered by Leon at her cactus shop are those of Martinez or are somehow authorised by or connected with him.

The legal points of this dispute are uncontroversial. However, the factual background and the evidence presented by the claimant and its assessment by the judge make this case well worth reading.

Martinez opened his tattoo parlour at Old Street in 2001, where the name ‘prick’ has been displayed in the window in the form of a neon sign since at least May 2005. The interior of the shop is described as dark and full of an eclectic mix of objects, rock and roll memorabilia and items for sale. While the claimant insists that his business has always been referred to solely by signs incorporating the name ‘prick’ the address of the website for the tattoo parlour is www.henryhate.com and this domain name is used for business email correspondence.

Leon opened her cactus shop on 21 July 2016 about one mile down from the tattoo parlour on Kingsland Road. In contrast, the window of the shop is filled with a large number of cacti and succulents in varying sizes standing on wooden shelves or the wooden floor and the interior of the shop is bright and minimalistic with white walls. The name ‘prick’ can be seen externally and is painted in an all-capital black serif script on the glass of the shop window and on a small white sign which is visible when the shop is closed and shutters pulled down. The website used by the business is www.prickldn.com and this is the domain name used for business emails.

Based on the above description of both businesses it seems that despite their proximity, their completely different looks would make it difficult to prove misrepresentation and damage, which, along with goodwill, are necessary to establish a passing off claim. This is why it was a difficult challenge for the claimant to provide sufficient evidence in order to succeed.

Evidence

Leon explained that she chose the name of her business because of its double meaning and that in April 2015 she searched for ‘prick cactus shop’ in Google and did not get any hits relating to the tattoo parlour. Asked in cross examination why she did not simply search the word ‘prick’, she answered that it would have shown her ‘porn and penises’. Since she also found no hits on the UK and EU trademark registers, she assumed the name was free to use.

There is no doubt that Martinez was aware of the cactus shop within less than two weeks from its opening as on 1 August 2016 he posted a one star review on the cactus shop’s Facebook page as well as a message stating he was not happy with the ‘prick’ name of the cactus business and threatening official action.

All evidence presented by Martinez is dated after 1 August 2016 and comes from his longstanding customers or friends. Oddly, all of them contacted him through a contact form from the www.henryhate.com website. As the judge stated, the likelihood of four such people, who no doubt had the claimant’s personal contact details, entirely separately choosing this way of communication, instead of text, Whatsapp or email, and deciding to send virtually identical messages expressing their confusion with the cactus shop, seems to be extremely unlikely.

For that reason, the credibility and reliability of this evidence was put into question and as a result, the evidence was given little weight. All those messages were sent between 10 August 2016 and 19 August 2016. Leon tried contacting Martinez on 11 August 2016 asking him for his email address to resolve the matter but on 9 September 2016, putting it nicely, he told her to get lost.

From what was submitted and then further dissected during cross examination, it is difficult not to raise an eyebrow. Martinez’s witnesses were trying to convince the judge how confused they were by the cactus shop of the same name by giving questionable justifications. By way of an example, one of the witnesses, Bates, claimed that he went to the cactus shop when he arranged his tattoo appointment and was informed by the shop assistant that it was not a tattoo parlour.

He first explained that he assumed it was Martinez’s art studio because of his avant-garde and eccentric style. In cross-examination, he said he thought the cactus shop was in fact a second tattoo shop to then finally state that he thought Martinez might have diversified into cactus supply. Such flimsy evidence was unsurprisingly rejected by the judge and instead of helping the claimant’s case, it acted against it. Most of the evidence was either dismissed by the judge or given little weight also because the witnesses were not ordinary consumers but closely connected with the claimant.

Leon firmly stated that she was not aware of any suggestion of anyone ever having believed that her shop was in any way connected to the tattoo parlour. Martinez presented a few examples of deception caused by the online use of the name but that evidence was also considered insufficient and it was either only proving mere confusion or falling into the category of “the hurried consumer”. As such, there was only one instance of deception of a member of the relevant public which supported the allegation of misrepresentation but in the judge’s view it had not damaged the claimant’s goodwill.

Passing off

The claimant’s goodwill from use of the word ‘prick’ was considered to extend to tattoo-related visual art as well as all of the pleaded wider visual art, including the collaborations, but not stretching any further than that. That goodwill was also considered to be geographically limited to the area around the tattoo parlour covering the London Boroughs of Hackney and Tower Hamlets, which includes Dalston where the cactus shop is located.

When considering material misrepresentation, the judge referred to Harrods v Harrodian School and the guidance stemming from it that where there is no common field of activities, the burden of proving the likelihood of deception and resulting damage is a heavy one. The judge concluded that it is difficult to imagine two businesses with two less closely related activities than the sale of cacti and the provision of tattooing services. As described above, the get-up of the tattoo parlour and the cactus shop had nothing in common. The same would apply to the parties’ websites. Both of these factors combined make it less likely that any member of the relevant public could reasonably be deceived into thinking that the businesses were connected in any way.

Since no strong evidence was presented, overall the claim failed as no material misrepresentation was found. The judge concluded by saying that the public would not be confused but rather would understand that the name ‘prick’ refers to the specific properties of cacti or tattooing and would appreciate the humour. They would not assume that there must be a connection between the two.

Summary

It is clear that Martinez was displeased that someone else came up with the same idea of using the word ‘prick’ in a cheeky manner to describe their business, especially so close to his own tattoo parlour. Unfortunately, he had not registered a trademark, which may well have assisted him. Instead, he needed to rely on passing off, which, whilst flexible, is heavily dependent on the evidence. What evidence Martinez had came from his friends who, instead of using a more believable medium of communication, chose to share their concerns via a contact form on his website. Their witness statements and evidence given under cross-examination were inconsistent and far-fetched.

It seems that it might have been a better idea for Martinez to wait until he gathered enough evidence of actual misrepresentation and, if there was none, then clearly that would have been good news for him as it would have meant that his business had not been adversely affected by the cactus shop.