When Passing Off Gets Prickly

(1) Henry Martinez t/a PRICK (2) Henry Hate Studio & Prick Tattoo Parlour Limited -v- (1) Prick Me Baby One More Time Limited t/a PRICK (2) Gynelle Leon

Warning to readers:

As you can probably gather from the title, this is a case in which the word PRICK is heavily featured. There’s simply no avoiding it (as both sides trade as PRICK, but for very different reasons) and we will use it in this article purely for academic purposes!

This, unlike most case reports, is not the tale of a one party putting a stop to the other’s infringing activity. Instead, justice was served with a finding that our clients were acting perfectly lawfully in using an identical brand name to that of the Claimants.

Factual background

The Claimants are a well-known tattoo artist and studio who boast a number of celebrity clients. They had jointed traded as PRICK for a number of years in Shoreditch, East London and issued proceedings in the Intellectual Property Enterprise Court (“IPEC”) against a nearby cactus shop and its owner, who also traded as PRICK.

The claim, perhaps unusually, was for passing off as opposed to trade mark infringement and the Claimants sought to put an end to the use of PRICK in relation to the sale of cacti and succulent plants.

Both sides had chosen to trade as PRICK in order to take advantage of the obvious play on words, the Claimants with their tattooing needles and the Defendants with their spikey plants. However, and rather crucially, the Defendants had not chosen their brand name with any knowledge of the Claimants, they had picked it simply because it worked for their business. Indeed, the judge noted in her judgment that when the Second Defendant was cross-examined as to why she did not simply Google the word PRICK before selecting her brand name “she answered with admirable succinctness: Because it would have shown me porn and penises”.

In spite of this lack of knowledge the Claimants were convinced that grounds for passing off existed and they produced a number of witnesses at trial who gave varying accounts of confusing the two businesses.

The judgment

To succeed in a passing off action a claimant needs to prove three things:

Goodwill (i.e. notoriety in respect of the brand;
Misrepresentation (a deliberate deception on the part of the defendant leading to customer confusion); and
Damage (as a result of the above).
The Court found that although the Claimants were able to show goodwill they failed to prove misrepresentation. Without this, damage could not be considered and an actionable passing off could not be found.

The Court doubted some of the evidence relied upon by the Claimants and decided that the use of the PRICK brand was innocent. The Defendants did not seek to confuse consumers and, due to the fact that the commercial offering of the two sides were so different, misrepresentation could not be inferred.

The Claimants, having lost, were then obliged to pay the legal costs incurred by the Defendants. Fortunately, for both sides, these costs were less than half of the £50,000 costs cap set by the IPEC and so the judge had no trouble making an award for payment.

Briffa comment

Aside from a great result for our client this case is a testament to the fact that court proceedings in the IPEC can be fought, and won, without legal fees spiraling out of control.

The IPEC is often hailed as low-cost legal forum as the maximum recovery of legal fees is limited to £50,000. However, this is no small amount and parties often exceed this or have significant sums removed from their claim even when their bill falls below the cap.  This means that the “winning” party can often be left out of pocket, with large legal bills remaining unpaid.

Our aim at Briffa is to get the right judgment for our clients without costing the earth. This case shows that it’s possible and we couldn’t be happier with the result.

A full copy of the judgment can be found here.