A dispute arose between two business claiming the use of the word ÂPrickÂ in the title of their shops. Henry Martinez is a tattoo artist and Gynelle Leon is the Director of a company called Prick me baby one more time, selling cacti among other things. One of the issues was whether Martinez could be argued to have goodwill on the word ÂPrickÂ and be extended further than just tattooing and piercing services to amount to passing off and be said to be a misrepresentation by Leon and her cactus and succulent plants shop.
Firstly, the tattoo parlour opened its doors in 2001 and although had the word ÂPrickÂ on the front of the shop, although used the words henryhate on all website and associated correspondence. His shop set up is dark and housed rock and roll memorabilia. The cactus shop opened its doors in 2016 and was positioned a mile down the road with a completely opposite exterior and interior look of cactus and bright white looks. However, it too has the word ÂPrickÂ outside but actually uses prick in its website name and all correspondence.
This difference paints a picture of difficulty for Martinez to argue passing off and damage to his business. On the face of it, proximity of the two shops and their names on the front are all that seem relatively similar as evidence to succeed in a claim of passing off.
Although Martinez provided apparent evidence of damage to his business and confusion between the two uses of the word ÂPrickÂ, the judge could not extend goodwill further than visual art and limited geographically of goodwill to the London Boroughs of Hackney and Tower Hamlets, so did mean it covers the areas of both shops. When considering material misrepresentation, the judge could not Âimagine two businesses with two less closely related activities than the sale of cacti and tattoo services.Â It was held that the evidence was not sufficiently strong and that there would be no confusion from the public between the two services to think that the wording of the name ÂPrickÂ would place both businesses as one, or connected in any way, so the claim failed. It was concluded that Âthe public would not be confused but rather would understand that the name ÂprickÂ 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.Â
An interesting case, and decision. It shows how difficult a judge may find it, but also how abundantly clear the law is on passing off. If all the boxes cannot be ticked then the claim fails.