Prick! - Passing off, tattoos, cacti and geographical proximity

The IP Enterprise Court has undoubtedly been a success. It is a low cost IP court for England and Wales which enables access to justice for SMEs with IP disputes to resolve. However, every now and again a case comes along which might well have benefited from a higher hurdle to issuing proceedings.

The owner of Amy Winehouse’s favourite tattoo parlour, Henry Martinez, also known as Henry Hate, has a tattoo parlour in Shoreditch which has been called Prick Tattoos since 2001

A mile or two down away on Kingsland Road, a new shop came along in July 2016. This shop sold cacti and associated plants under the name Prick (& the Britney Spears inspired company name Prick Me Baby One More Time).

While cacti and tattoos are not often confused, the geographical proximity and similar names concerned Mr Martinez and led to a series of social media posts followed by the inevitable legal letter and claim: Martinez (t/a Prick) & Anor v Prick Me Baby One More Time Ltd (t/a Prick) & Anor [2018] EWHC 776 (IPEC).

Some prickly issues

At trial, there were two issues to be considered:

1 whether Mr Martinez and his company’s goodwill associated with “signs incorporating the word PRICK" extends beyond the provision of tattooing and piercing services supplied from the Tattoo Parlour, and if so to what extent

2 whether use of the word PRICK by the defendants amounts to a material misrepresentation that the goods and services offered by the Cactus company (Prick Me Baby One More Time) and its owner, Gynelle Leon

The issues were discussed in detail in the decision which is worth a read for:

1 Some of the issues which can arise in trade mark clearance (see paragraph 40); and
2 The way an English court will approach evidence from friends which is submitted apparently without prompting via an online web form - suffice to say it lacked credibility, particularly when the witness was not available for cross examination (see paragraphs 8 to 12)

In order to succeed in a passing off claim, you need to show that (1) there is goodwill which is more than mere reputation (this can be a sign eg “Prick” and/or “get up” or trade dress) and (2) there is a misrepresentation ie a deception which leads to consumers believing there is a connection between the owner of the goodwill and the person using the sign, get up or similar.

The court found some goodwill in the Prick name, this was essentially limited to tattoos. However, there was no evidence of a deception - at the best there was one person who had seen the cacti shop with the shutters down and only the word “Prick” visible. He was put straight the next time he went there.

The moral of the story is that even when you have close geographical proximity, you cannot stretch goodwill too far and without very good evidence of deception, you’re not going to succeed. If the get up had been very similar or more people had been deceived, the situation may have been different.