What's the difference between a tattoo and a cactus? This isn't the start of a bad joke, but a serious question that was considered in front of Her Honour Judge Clarke in a recent passing off case in the Intellectual Property Enterprise Court. It turns out that – unsurprisingly – the differences between a tattoo and a cactus are so great that the Claimant's claim for passing off failed.

The Claimant was Mr Henry Martinez (known professionally as Henry Hate): a well-known and well-regarded tattoo artist who has been inking the likes of Boy George, Alexander McQueen and Amy Winehouse from his Shoreditch parlour 'Prick Tattoo' since 2001. The Defendant was Ms Gynelle Leon, who opened her cactus and succulent shop 'Prick London' 1.1 miles down the road from Prick Tattoo in 2016. The Claimant sued the Defendant for passing off, and, a split trial having been ordered at the CMC, the two questions before the court at the liability trial were:

  1. Whether Mr Martinez's goodwill associated with signs incorporating the word 'Prick' extended beyond tattooing and piercing services (and, if so, to what extent); and

  2. Whether the use of the word 'Prick' by the Defendant was a material misrepresentation of those goods and services offered by Mr Martinez, or were somehow authorised by or connected with him.

Goodwill

The Claimant asserted that goodwill subsisted in the use of the word 'Prick' in connection with all his various artistic ventures and collaborations as well the tattoo parlour itself. Her Honour Judge Clarke was not persuaded by this. She accepted the Defendant's submission that 'although Mr Martinez and the Tattoo Parlour may have a reputation which extends more widely than London, goodwill attaches to trading and not mere reputation' (emphasis added). So, the fact that Mr Martinez may well have a kind of 'cult status' in the world in which he operates did not affect the extent of the goodwill that subsisted in the tattoo parlour itself, which was geographically limited to 'a relatively local area around the Tattoo Parlour'.However, as it happened, this area did incorporate the location of Ms Leon's cactus shop.

Material misrepresentation

Having established this limited – though geographically relevant – subsistence of goodwill in Mr Martinez's tattoo parlour, Her Honour Judge Clarke moved on to the question of whether Ms Leon's use of the word 'Prick' in her cactus shop was a material misrepresentation of Mr Martinez's store. The burden of proof for the Claimant was 'a heavy one' here, since there was no overlap in the goods and services offered by the two stores – in fact, it was concluded that 'it is difficult to imagine two businesses with two less closely related activities'.

Her Honour Judge Clarke was unable to find that there was any material misrepresentation by the Defendant. The physical stores and online get ups of the Claimant and Defendant were polar opposite, the former being dark, eclectic, full of rock and roll and other memorabilia; the latter being bright, minimalist, and (unsurprisingly) full of plants. The only similarity was the black painted woodwork on the outside of the store fronts, but even that had an effect that was 'quite different' on a potential customer.

She was also alive to the fact that both companies were relying on the humour inherent in using the word 'prick' to draw customers in, but that it was equally and differently applicable to both companies: the prick of the tattoo needle and the prick of a cactus frond. Ultimately, customers were 'more likely to come very quickly to an appreciation that the name refers to the specific properties of Cacti or Tattooing, as the case may be, appreciate the humour, and so not go on to assume that there must be a connection.'

The evidence

Her Honour Judge Clarke spent some time analysing the credibility of the witnesses and the factual evidence that had been put before her during the trial, and – as with any passing off claim – her findings on the evidence were central to her ultimate conclusion. Although the Claimant had gathered evidence from a large band of loyal customers-cum-friends (some of whom had manufactured the most unlikely of stories to try and prove their own confusion), at no point could the Claimant advance any simple, straightforward evidence that a customer had said 'I bought a cactus at your new cactus shop'.Her Honour Judge Clarke was unequivocal in saying that 'mere confusion on the part of consumers, if it does not impel customers to do business, is not enough.'It seems that, in their enthusiasm to try and say all the right things, the witnesses actually did the Claimant's claim and credibility some damage.

Conclusion

Whilst this is not a particularly surprising decision, it serves as a useful reminder of the essential elements of a passing off action. It also highlights that where the respective goods and services are not at all closely related it will be particularly difficult to establish any misrepresentation.

After all, if you were out in Shoreditch intending to get a tattoo, surely you'd walk the extra 1.1 miles to get to the right shop rather than buy a cactus…