It is difficult to imagine two businesses with two less closely related activities than the sale of potted plants and the provision of tattooing and piercing services, but this hasn’t stopped a passing off claim being brought by a London tattoo artist over the use of his popular trading name "PRICK".
In the case of Martinez (t/a Prick) and another v Prick Me Baby One More Time Ltd (t/a Prick) and another  EWHC 776 (IPEC) (11 April 2018), Henry Martinez (tattoo artist to stars such as Amy Winehouse, Alexander McQueen, Boy George and Pete Doherty) took issue with a new cacti and potted plant trader, opening its doors nearby under the PRICK name.
Mr Martinez claimed that:
- customers would find the cactus shop when they intended to go to the tattoo parlour, and would not make it there, resulting in lost business;
- customers would find the cactus shop and assume that Mr Martinez has changed the nature of his business, no longer offering tattoo and piercing services; and / or
- the edgy, rock 'n' roll "PRICK" brand developed by Mr Martinez would be tarnished by association with the clean living, millennial style of the cactus shop, causing customers to turn to an alternative provider of tattoo and piercing services.
Whilst the Intellectual Property Enterprise Court (IPEC) did find goodwill in Mr Martinez’s PRICK name, this goodwill was limited to the provision of tattoos and piercing services in his local trading areas, namely, the Boroughs of Hackney and Tower Hamlets.
Turning to misrepresentation and damage, it is legally accepted that in order to be successful in a passing off action, a common field of activity between both parties is not strictly necessary; however, as was evident in this case, when there is no common field of activity the burden of proving misrepresentation and damage is much higher.
In this particular situation, the evidence submitted by Mr Martinez was not enough to persuade the court that a misrepresentation existed and/or that this misrepresentation would cause damage to his business.
Accordingly, on this thorny issue, IPEC gave Mr Martinez’s PRICK the flick.
For the reasons I have given, I am satisfied that the use of the word "PRICK" by the Defendants does not amount to a material misrepresentation that the goods and services offered by the Defendants are those of the Claimants or are somehow authorised by or connected with the Claimants. The claim must fail.