PROVING THINGS 90 : THE TATTOO ARTIST & THE CACTUS SHOP: PRICK ME ONE MORE TIME

The opportunities for puns arising out of the issues in Martinez (t/a Prick) & Anor v Prick Me Baby One More Time Ltd (t/a Prick) & Anor [2018] EWHC 776 (IPEC) are obvious (and indeed are mentioned in the judgment itself). However  it is easy to overlook the fact that the  resolution of this case comes down to a basic failure to prove things.

“This is a dispute between a tattoo artist and a retailer of cacti about the use of the trading name “PRICK”.

THE CASE

The claimant is a tattoo artist trading under the name “Prick tatoos”. The defendant runs a shop selling cactus and succulent plants known as “Prick”.  The issue was whether the use of the word “prick” amounted to a misrepresentation.

THE ABSENCE OF EVIDENCE

The judgment recognises that the names represent an element of “humour”.  There was scant evidence of confusion.
    1. The Claimants submits that the two main issues for consideration of misrepresentation are in the use of the identical name “PRICK” by two businesses located just over a mile from each other in East London: identity and geographic proximity. As Dr Muir Wood points out, although the Tattoo Parlour’s address is on Old Street, it is on the corner of Kingsland Road, and so the “PRICK” Cactus Shop opened up literally down the road from the previously established “PRICK” Tattoo Parlour. There is no dispute that the Claimants and Defendants have used the identical mark “PRICK”.
    2. Dr Muir Wood submits in his skeleton argument that the close geographical proximity of the two businesses leads to a real risk of members of the public “mixing them up and assuming they are connected”, and that it has resulted in “a marked number of instances of deception”. In particular, he submits that Mr Bates, Ms Higgins, Mr Rose, Mr D’Agostino and Mr Innes have been “deceived by the presence of the Cact[us] Shop in such close proximity” into thinking that it is connected with Mr Martinez or the Tattoo Parlour. I have accepted Mr Bates’ written evidence on the point, but I cannot rely on Mr Rose’s evidence and I give Ms Higgins on the one hand and Mr D’Agostino and Mr Innes’s evidence on the other limited and relatively little weight, respectively. I find this evidence is, therefore, very thin.
    3. It is also highly relevant, in my judgment, that each of those witnesses knows Mr Martinez and the Tattoo Parlour well. It is for the Claimant to satisfy the court that there has been deception of a substantial number of consumers who erroneously believe that there is a trade connection between the Claimants and the Defendants to cause damage to the goodwill of the Claimant. However, Mr Bates, Ms Higgins, Mr D’Agostino and Mr Innes are not ‘consumers’ for that purpose, i.e. ordinary members of the public who are in the market for the Claimants’ goods and services. They are people who are closely connected with the Claimants and particularly knowledgeable about them due to their long history of friendship or of visiting Mr Martinez and the Tattoo Parlour over many years. Mr Bates accepted in cross-examination that the reason he assumed on seeing the Cactus Shop that there must be a link with Mr Martinez was because he “knew Henry and knew his character”. Accordingly the evidence of these witnesses, which I have already found is very thin, does not assist in satisfying the heavy burden on the Claimants, in my judgment.
    4. What evidence is there that the identity of the use of the “PRICK” sign and/or geographic proximity of the Tattoo Parlour and Cactus Shop has actually deceived ordinary members of the public in the market for the Claimants’ goods that there is a trade connection between them? Dr Muir Wood points to four cases which he says show deception caused by online use of the identical mark “PRICK” by the Defendants: (i) Megan Reynolds of the Royal Horticultural Society who mistakenly contacted the Tattoo Parlour when looking for the contact details of the Defendants online; (ii) Lola R who mistakenly left a tattoo review on the Cactus Shop website; (iii) Ellie, who wanted to know if she could meet Xavier the tattooist “at the Prick on Kingsland Road”; and (iv) Naima who posted a message to the Tattoo Parlour via its website saying “Hello I cannot find your page on cactus. What is your nearest tube?”.
    5. In relation to Naima, it very difficult to understand how she could have found the www.henryhate.com website when she appears to have been searching for cacti. It is also difficult to understand how she could have found herself on the www.henryhate.com website and still sought to find a page about cacti on it, before then sending a message about cacti, given that the website is clearly about tattoos. Dr Nicholson suggested that perhaps she was looking for tattoos of cacti. I cannot know and that is the risk inherent in seeking to evaluate such short, ambiguous hearsay messages. Has she been deceived or is she merely confused? On the balance of probabilities I find the latter. Mere confusion is not enough. Even if I had been able to find that she was searching for the Cactus Shop and had been deceived by the proximate location of a second business using the mark “PRICK”, it is clear that although she may be an ordinary member of the public, she does not appear to be in the market for the Claimants’ goods. She is in the market for a cactus. I am satisfied that any deception which might have been caused to her by the use of the identical sign “PRICK” by the Claimants and the Defendants cannot harm the goodwill of the Claimants as it is the Defendants who will have lost out if Naima did not, in the end, find her way to the Cactus Shop.
    6. Similarly, Megan Reynolds does not appear to be in the market for the Claimant’s goods as she was hoping to speak on the telephone to the Cactus Shop. In any event, I accept Mr Nicholson’s submission that this appears to be the case of mere mis-identification of a telephone number which amounts to no more than an administrative error.
    7. However, both Ellie and Lola R do certainly appear to be members of the public who were in the market for the Claimants’ goods. Lola R says in her review that she has had half a tattoo applied at the Tattoo Parlour and intends to go back for the other half. She does also appear to have been sufficiently deceived by the use of the name “PRICK” on the Cactus Shop website to leave a 5 star review of her tattoo application there. I am at a loss to understand how Lola R can believe that the Cactus Shop website has any connection with the Tattoo Parlour, given that she appears just to have come from the Tattoo Parlour and so must be well aware of the dissimilarities in style and get up of the place, compared to the website she is on. For that reason I feel that she must fall into the category of “moron in a hurry” who has been deceived but who cannot sustain a claim for passing off. In relation to Ellie, she appears to have seen the premises at Kingsland Road, noted the name, and assumed that it was connected with the Tattoo Parlour, not appreciating that it was a Cactus Shop. I accept that she appears to be an assumer rather than a wonderer, per Jacob LJ in Phones 4U Ltd v Phone4u.co.uk and as such has been deceived.
    8. My findings in relation to these witnesses mean that there is only one instance of deception of a member of the relevant public which supports the allegation of a misrepresentation. Even that instance, however, I do not find to be material as I am not satisfied that the misrepresentation has damaged the Claimants’ goodwill or is likely to damage it in a serious way. Ellie appears to have every intention of meeting up with Xavier and getting her tattoo designed. She simply hopes to do so in a slightly more convenient location for her. There is no suggestion that if she can’t meet him at Kingsland Road she won’t meet him at all. It is only just over a mile up the road, after all. I have no evidence on the point but it seems inherently likely that she was told that the shop on Kingsland Road was a cactus shop so she came to the Tattoo Parlour instead, without any damage being caused to the Claimants’ goodwill.
    9. Of course, if even one member of the public has been deceived by the Defendants’ use of the name “PRICK”, it is possible that other members of the public have been or are at risk of being deceived, whether or not the Claimants or the Defendants come to know of it. Can I be satisfied from the evidence of deception that I have accepted and the global consideration I must give to that there is any kind of association, or could be in the minds of a substantial number of consumers? In my judgment, I cannot, for the following reasons:
i) I remind myself that I have accepted Ms Leon’s evidence, and Ms Olsen’s undisputed evidence that nobody has ever come into the Cactus Shop and asked them if they are connected to the Claimants. Mr Bates has, and one or other of them has forgotten that, and it may be that he is not the only one he has forgotten, but I would expect them to remember if there were more than one or two of them.
ii) I also accept Dr Nicholson’s submissions about what he calls the “missing evidence of confusion”:
a) the Claimants have not advanced any evidence that any customer of the Claimants has ever said “I bought a cactus at your new cactus shop” or even “I see you have opened a new cactus shop”. He submits that if a customer had ever done so, the Claimants would undoubtedly have put it in evidence;
b) the Claimants have not advanced any evidence of any purported deception since the Particulars of Claim in March 2017. He submits that if the deception was prevalent, they should have been able to do so. The fact that they have not suggests that there is no on-going actionable misrepresentation.
iii) Other factors which are relevant include the fields of activity and get up of the two businesses. However as I have explained, both militate against such a connection because of their extreme dissimilarity. Dr Nicholson says so, too, does the allusive nature of the pun inherent in the use of the word “PRICK” for these two businesses. Both rely on the humour inherent in using a word which is both slang for penis, and also allusive of what happens or might happen in the Tattoo Parlour and the Cactus Shop. Dr Muir Wood’s submission on this point was that since the allusive pun relied on was similar, that strengthened the likelihood of a connection being made in the minds of the relevant public. I disagree. If the Cactus Shop was called ‘Henry Hate’, for example, the public might well assume there was a connection, since why else would that name be chosen? But with “PRICK”, they are more likely to come very quickly to an appreciation that the name refers to the specific properties of Cacti or Tattooing, as the case may be, appreciate the humour, and so not go on to assume that there must be a connection.
  1. Since there is no other evidence of misrepresentation to relevant members of the public before me, I will not go on to consider the issue of damage to goodwill any further as to do so would be merely speculative. 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.”