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IPEC gave sharp ruling in ‘Prick’ passing off claim

Written by Ellis Sweetenham on 19 April 2018

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Henry Martinez (trading as Prick) and another v Prick Me Baby One More Time Ltd (trading as Prick) and another [2018] EWHC 776 (IPEC), [2018] All ER (D) 33 (Apr)

Facts:

The first Claimant was a tattoo artist.

Since 2001, he had operated a tattoo parlour in Shoreditch, London, called Prick Tattoos through a company, who is the second Claimant.

In July 2016, the second Defendant opened a shop selling cactuses and other plants in Dalston, London, called Prick Me Baby One More Time Ltd.

The Claimants contended that the Defendants' use of the word 'prick' in the context of a business selling cacti and plants amounted to passing off.

Issues:

The Court had to consider the following issues

(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 shop and, if so, to what extent.

 (2) Whether the use of the word 'prick' by the defendants 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 the claimants.

Judgment:

Firstly, considering the Claimant’s goodwill, the Court held that the use of the word ‘prick’ was geographically limited to the local area of the tattoo shop. Any use outside of this area would not affect the Claimant’s goodwill. The Court ruled that this ‘local area’ covered the London Boroughs of Hackney and Tower Hamlets. This area includes Dalston, where the cactus shop was located.

In respect of the second issue, the Court held there were very little similarities between the two businesses, even exclaiming it was difficult to imagine two businesses with two less closely related activities than those of the Claimants and the Defendants.

The retail of plants and the service of a tattoo artist did not have a connection. Coupling this with the dissimilarities of the shop’s get up, the Court could not find a likelihood that members of the public would be in the belief that the two businesses were connected.

The shared use of the word ‘prick’ was not enough to amount to a misrepresentation by the Defendant of the Claimant’s goodwill.

Therefore, the Court ruled the claim had to fail.

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