HomeInsightsMartinez v Prick Me Baby One More Time [2018] EWHC 776 (IPEC): A “Prick” by any other name…

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“This is a dispute between a tattoo artist and a retailer of cacti about the use of the trading name “PRICK”.” A recent judgment in a passing off claim, handed down by Clarke HHJ sitting in the Intellectual Property Enterprise Court, on 11 April 2018, involves an East London tattoo parlour called Prick, famous for the celebrity body art of Boy George, Alexander McQueen and (probably most famously) Amy Winehouse. The owner, a famous tattoo and visual artist named Henry Martinez, has run the business in its current store – with its black painted store-front and neon “Tattoo” sign out front – since 2001. The defendants, who opened their store down the road from Mr Martinez in the middle of 2016, sells cacti and is also behind a black-painted store-front, with careful white lettering spelling “PRICK” on the window. The claimants brought this claim in passing off, alleging that the defendants’ name is a material misrepresentation that is causing confusion to consumers.

Clarke HHJ takes a very purposeful and clear trot through both the elements of the tort, as well as an analysis of the credibility of the evidence before her. The later proves to be key in her ultimate conclusion, as she appears unpersuaded by what is undeniably manufactured evidence by certain of the witnesses for the claimants. The court begins by looking at the “classic trinity” of a passing off claim: (i) that the claimant’s goods or services have acquired goodwill in the market and are known by some distinguishing name or mark; (ii) that there is a misrepresentation by the defendant that leads the public to believe that the defendant’s goods or services are those of the claimant, or that the two are connected; and (iii) that the claimants have suffered or are likely to suffer damage as a result of the erroneous belief.

The court’s analysis begins by considering how far the claimant’s goodwill extends, particularly in consideration of Mr Martinez’s other career as a visual artist featured at the Saatchi Gallery in London and in various commercial tie-ins with fashion designers who feature his art on their goods. Ultimately the court was not persuaded by the claimants’ arguments that this additional activity increased the scope of the goodwill in the claimants’ trading name and business; nor was it persuaded by the defendants’ argument that the additional activities were unrelated to any goodwill in the tattoo parlour and its name. Rather the court concludes that there is goodwill in the name “PRICK”, although that goodwill is limited to the immediate geographical area of the tattoo parlour, including Dalston, London, where the defendants’ cactus shop can be found.

The court next considers whether the defendants’ use was a material misrepresentation. As the court points out, to make his claim, Mr Martinez needed to make out that he had suffered or was likely to suffer damage to his goodwill by reason of the erroneous belief engendered by the defendants’ misrepresentation: in other words, whether a material misrepresentation had been made. It was not (and should not have been according to well established case law) fatal to Mr Martinez’s claim that the defendants’ shop is an entirely different type of business to that of the claimants. However, it did make the claimants’ burden of proof “a heavy one”.

In considering whether or not there has been a misrepresentation such that consumers would be confused, Clarke HHJ turns to the similarities in get-up of the parties’ shops and online presence. Both shops have a black store-front, although the cactus shop window is filled with (surprise) cacti, while the tattoo parlour (fittingly) displays a tattoo sign. Once inside, the tattoo parlour has a dark and “eclectic” style, while the cactus shop is minimalist and bright. Turning to the website, as an initial point, the tattoo parlour’s website does not even feature the name “PRICK” rather it is found at www.henryhate.com. The claimant’s website is www.prickldn.com and it is plain upon first entering the site that it is for the purchase of cacti. These dissimilarities made it highly unlikely in the court’s view that there was a likelihood for confusion.

In fact, what evidence of confusion was produced by the claimant was either discredited (on cross examination) or irrelevant (for not being evidence given by consumers), or evidence only of the confusion of a “moron in a hurry”. In the only instance that the court could point to of deception of a relevant consumer, there was no evidence of damage to the claimants, as it is evident that the witness would be and probably has relied on the claimant for her body art needs.

Determinations of claims brought in passing off are fact specific and rely considerably on the evidence of consumers who were confused by the use of the claimant’s mark or get-up. Here, the claimants’ customers – many of whom were now personal friends – clearly understood the weight of that evidence and (for all of the best intentions) worked hard to drive that point home: probably too hard. All of the other evidence in this case being equal, had the claimant produced more careful evidence in this regard the result likely would have been very different.