Tattoo artist's claim meets a prickly end

The Intellectual Property Enterprise Court has dismissed a claim for passing off brought by a tattoo parlour against a cactus shop concerning the use of the name "PRICK". While the court found that the tattoo parlour had generated local goodwill in the PRICK name, it held also that there had been no material misrepresentation that the goods and services offered by the cactus shop were authorised by or connected with the tattoo parlour.

Background

The First Claimant in this case was a noted tattoo artist professionally known by the name 'Henry Hate'. He operated a tattoo and piercing parlour in Shoreditch called 'Prick Tattoos'. Since 2001, the parlour had been run through a company called Henry Hate Studio & Prick Tattoo Parlour Limited (the Second Claimant). The First Claimant had gained notoriety as a tattoo artist who had worked with several famous figures, most notably the late Amy Winehouse.

The Second Defendant, on the other hand, was the proprietor of a cactus and succulent plant shop called "Prick", which was located in Dalston. The shop, which opened in July 2016, was run through a company called Prick Me Baby One More Time Limited (the First Defendant), of which the Second Defendant was the sole director and shareholder.

The Claimants issued proceedings against the Defendants claiming that the use of the word "PRICK" in context of the cactus shop business amounted to passing off.

Finding of the Court

The two issues the Court had to consider at trial were: (1) 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 (2) whether the Defendants' use of the word PRICK amounted to a material misrepresentation that the goods and services offered by the Defendants were those of the Claimants or were somehow authorised by or connected with them.

The Court held that in order for the Claimants to succeed in their claim for passing off, they had to satisfy the Court of the "classic trinity" of elements, namely that (a) the Claimants' goods or services had acquired goodwill in the market and were known by some distinguishing name, mark or other indication; (b) there was a misrepresentation by the Defendants, which had led, or was likely to lead the public to believe that goods or services offered by them were those of or connected with the Claimants; and (c) the Claimants had suffered, or were likely to suffer, damage as a result of the erroneous belief engendered by the Defendants' misrepresentation.

The Court also highlighted that while the law of passing off protect traders from the misappropriation of their goodwill by others by use of their mark or name in a way which deceived customers and caused that trader damage, it does not give that trader a positive right to a name or a general right to prohibit the use of a name or a mark that he has adopted; the key issue is therefore one of misrepresentation.

Goodwill

The Court found that the Claimants had acquired goodwill from their use of signs incorporating the word PRICK in relation to tattoo-related and wider visual art. However, that goodwill was geographically limited to a relatively local area around the tattoo parlour, namely the London boroughs of Hackney and Tower Hamlets, which included Dalston, i.e. the location of the Defendants' cactus shop.

Misrepresentation

For there to be an actionable misrepresentation, the Court held that there had to be deception of a substantial number of consumers who erroneously believed that there was a trade connection between the parties. Consumers in this context were ordinary members of the public who were in the market for the Claimants' goods and services; they were not particularly knowledgeable or closely connected with the Claimants. People "wondering about" a connection was unlikely to be sufficient. Moreover, mere confusion on the part of consumers, if it did not impel customers to do business, was not enough - there had to be deception or the risk of deception.

Although the Court found that there was no need for a common field of activity or trade between a Claimant and a Defendant in order to establish a claim in passing off, the commonality of the parties' respective fields of business activity was highly material to the issue of likelihood of confusion. In the present circumstances, the Court concluded that it would be difficult to imagine two businesses with two less-closely related activities. On the evidence, the Court was satisfied that the Defendants' use of the word PRICK did not amount to a material misrepresentation that the goods and services offered by them were those of the Claimants or were somehow authorised by or connected with them. The Claimants' case was therefore dismissed.

Case Ref: [2018] EWHC 776 (IPEC)