BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY ENTERPRISE COURT
New Fetter Lane
B e f o r e :
(sitting as a Judge of the High Court)
| (1) HENRY MARTINEZ T/A PRICK
(2) HENRY HATE STUDIO & PRICK TATTOO PARLOUR LONDON LIMITED
- and -
|PRICK ME BABY ONE MORE TIME LIMITED T/A PRICK
Dr Brian Nicholson and Dr David Ivison (instructed by Briffa) for the Defendants
Trial date: 2 March 2018
Crown Copyright ©
Her Honour Judge Melissa Clarke:
i) Whether the Claimants' goodwill associated with signs incorporating the word "PRICK" extends beyond the provision of tattooing and piercing services supplied from the Tattoo Parlour, and if so to what extent;
ii) Whether use of the word "PRICK" by the Defendants amounts 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.
i) Mr Ashley Rose. He filed an undated witness statement and was cross-examined. He is a long-standing customer of Mr Martinez and the Tattoo Parlour. Mr Rose was a nervous witness and his nervousness initially manifested itself in volubility. He gave long, over-explanatory answers to even very simple questions and had to be asked many times to try to listen to, and answer, just the questions asked. His evidence as set out in his witness statement appeared to be relatively straightforward but under Dr Nicholson's skilful cross-examination Mr Rose contradicted in a number of ways not only the evidence in his witness statement but also his oral evidence given a few minutes earlier. What emerged was a hopelessly confused, contradictory and, in my judgment, incredible story. Questions about the areas of confusion and contradiction flustered him further. By the end of the cross-examination Dr Nicholson had managed to extract from Mr Rose the admission that he was already aware that the Cactus Shop was not connected with the Tattoo Parlour or Mr Martinez in any way when he wrote a message to Mr Martinez on 7 September 2016 using the contact form on the www.henryhate.com website, which the Claimants rely on to show evidence of deception. That message said: "Henry did you move? Saw your shop front on way to Diner. Need to arrange appointment but you were closed. Looking forward to seeing the new place or is this your private space?" His explanation of why he had written it was entirely unconvincing and I regret that I do not believe he was telling the truth when he denied having written it in order to manufacture evidence which could be used in future legal proceedings against the Defendants. I accept Dr Nicholson's submission in closing that Mr Rose's lack of candour on this point, and the unsatisfactory nature of his answers in cross-examination, taints all of the rest of his evidence. I do not rely on any of it.
ii) Mr Henry Martinez. He filed a witness statement dated 11 October 2017 and was cross-examined and re-examined. I found him to be a good witness who made appropriate concessions when necessary. There remains in my mind a question mark about whether and to what extent he knew about Mr Rose's misleading messaging, but I give him the benefit of the doubt. I am satisfied that he came to court to give honest evidence to the best of his recollection.
iii) Mr Paul Saunders. He filed a witness statement dated 10 October 2017 and was cross-examined. He is a director of a London art gallery called the Westbank Gallery. He represents Mr Martinez in his wider artistic endeavours and sells his work. The bulk of Mr Saunders' evidence was opinion evidence although the Claimants had no permission to rely on expert evidence and he is not independent of the Claimants. However the Defendants did not object to his giving it, nor did they raise any objection to his credentials to give such expert evidence, so I allowed it. I found Mr Saunders to be a very straightforward, credible and reliable witness whose evidence was of assistance to the court.
iv) Mr Christopher Bates. He filed a witness statement dated 11 October 2017 and was cross-examined. He has been a repeat customer of Mr Martinez and the Tattoo Parlour for the last 18 years. He also owns one of Mr Martinez's artworks. Mr Martinez describes him as a good friend: Mr Bates says that they are friendly because he is a long-standing customer but he does not socialise with Mr Martinez. Mr Bates gave evidence of a series of incidents in which he was confused by seeing the Cactus Shop and believed it to be premises connected with Mr Martinez. I believe Mr Bates came to court to tell the truth as he understood it, but in the course of his cross-examination he seemed to change his evidence somewhat from the account he gave in his witness statement and in my judgment he did so in order to present a stronger case to support Mr Martinez. I do not know that he was aware of doing it, as he seemed to be rationalising it as he went along. It resulted in him providing a frankly implausible answer to the question "You didn't think Mr Martinez had given up tattoos and diversified into cactus supply did you?" to which Mr Bates replied "Yes, I did think that - knowing Henry it could be a new business venture." I do not believe he did think that and it does not fit with his witness evidence or his earlier oral evidence. Accordingly although I found in relation to much of his evidence, in particular his written evidence, he was a credible and reliable witness, I treat Mr Bates's later oral evidence with considerable caution.
i) the Claimants' goods or services have acquired goodwill in the market and are known by some distinguishing name, mark or other indication;
ii) there is a misrepresentation by the Defendants, whether or not intentional, which has led, or is likely to lead, the public to believe that goods or services offered by the Defendants are goods or services of the Claimants, or connected with them; and
iii) the Claimants have suffered, or are likely to suffer, damage as a result of the erroneous belief engendered by the Defendants' misrepresentation.
"It is well settled that (unless it is registered as a trade mark) no one has a monopoly in his brand name or get up, however familiar these may be. Passing off is a wrongful invasion of a right of property vested in the plaintiff but the property which is protected by an action for passing off is not the plaintiff's proprietary right in the name or get up which the defendant has misappropriated but the goodwill and reputation of his business which is likely to be harmed by the defendant's misrepresentation."
"What HFC has to prove is first that it is the owner of goodwill in the United Kingdom in the name HPC used in connection with its business. Next it has to show a misrepresentation by Midland. It contends that because HSBC and HFC are, it says, confusingly similar, the use by Midland of the brand HSBC makes a representation to the public that Midland's bank branches and services are those of HFC or are connected or associated in the course of trade with HFC or that HFC's bank, branches and services are connected or associated in the course of trade with Midland. If it can show those two elements, then it has to show that the misrepresentation has damaged its goodwill or is likely to damage it in a serious way."
"The name of a person, or words forming part of the common stock of language, may become so far associated with the goods of a particular maker that it is capable of proof that the use of them by themselves without explanation or qualification would deceive a purchaser into the belief that he was getting goods of A when he was really getting the goods of B. In a case of this description the mere proof by the plaintiff that the defendant was using a name, word, or device which he had adopted to distinguish his goods would not entitle him to any relief. He could only obtain it by proving further that the defendant was using it under such circumstances or in such manner as to put of his goods as the goods of the plaintiff. If he could succeed in proving this I think he would, on well-established principles, be entitled to an injunction."
"What right, it was asked, can an individual have to restrain another from using a common English word because he has chosen to employ it as his trade mark? I answer he has no such right; but he has a right to insist that it shall not be used without explanation or qualification if such a use would be an instrument of fraud."
"Striking dissimilarities in the get-up of premises may weaken a case based primarily on similarity of trading names, as in Furnitureland v Harris [concerning Furnitureland vs Furniture City fn:  1 FSR 536]. In TGI Friday's Australia v TGI Friday's Inc [fn:  FCA 304, 48 IPR 43 (Federal Court of Australia, Full Court)] … [t]he differences in get-up were so striking and substantial that patrons would assume that the near-identity of name was simply coincidental."
"…a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in new custom. It is the one thing which distinguishes an old-established business from a new business at its first start."
"This is of course is a question of degree – there will be some mere wonderers and some assumers – there will normally… be passing off if there is a substantial number of the latter even if there is also a substantial number of the former."
"The absence of a common field of activity, therefore, is not fatal; but it is not irrelevant either. In deciding whether there is a likelihood of confusion, it is an important and highly relevant consideration
"whether there is any kind of association, or could be in the minds of the public any kind of association, between the field of activities of the plaintiff and the field of activities of the defendant." Annabel's (Berkeley Square) Ltd. v G. Schock (trading as Annabel's Escort Agency)  R.P.C 838 at page 844 per Russell LJ.
In the Lego case Falconer J likewise held that the proximity of the defendant's field of activity to that of the plaintiff was a factor to be taken into account when deciding whether the defendant's conduct would cause the necessary confusion.
…Where there is no or only a tenuous degree of overlap between the parties' respective fields of activity the burden of proving the likelihood of confusion and resulting damage is a heavy one. In Stringfellow v McCain Foods (G.B.) Ltd  R.P.C. 501 Slade LJ said (at page 535) that the further removed from one another the respective fields of activities, the less likely was it that any member of the public could reasonably be confused into thinking that the one business was connected with the other; and he added (at page 545) that
"even if it considers that there is a limited risk of confusion of this nature, the court should not, in my opinion, readily infer the likelihood of resulting damage to the plaintiffs as against an innocent defendant in a completely different line of business. In such a case the onus falling on plaintiffs to show that damage to their business reputation is in truth likely to ensue and to cause them more than minimal loss is in my opinion a heavy one."
Mr Martinez and the establishment of the Tattoo Parlour
Use by the Claimants of the mark "PRICK"
Mr Martinez as a visual artist
The Cactus Shop
The beginning of the dispute and the Claimants' evidence of deception
i) An email from 'Naima' on 18 October 2016, who appeared to have accessed the Tattoo Parlour pages on the www.henryhate.com website looking for the Cactus Shop. That said "Hello I can not find your page on cactus. What is your nearest tube?";
ii) An email from 'Ellie' who wanted to visit one of the Tattoo Parlour's tattoo artists, Xavier and asked: "I just wanted to check – there's a Prick on Kingsland Road which is actually a bit closer to me, is this part of your business as well as the one in Shoreditch? Let me know if I'd be able to visit Xa[vier] for a chat there…";
iii) A phone call from Megan Reynolds of the Royal Horticultural Society on 3 November 2016 who was trying to contact the Cactus Shop, but when searching for their contact details on Google she had obtained those for the Tattoo Parlour; and
iv) Lola R, who after leaving the Tattoo Parlour posted a five star Google review of her tattooist Xavier under the Cactus Shop website in February 2017.
ANALYSIS OF ISSUES
i) customers will find the Cactus Shop when they intended to go to the Tattoo Parlour or Studio, and will not make it to the Tattoo Parlour or Studio, resulting in lost business;
ii) customers will find the Cactus Shop and assume that the Claimants have changed the nature of their business, no longer offering tattoo and piercing services or wider visual artistic services;
iii) and/or the edgy, rock 'n' roll "PRICK" brand developed by the Claimants will 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 or artistic works.
Issue (i) - does the Claimants' goodwill associated with signs incorporating the word PRICK extend beyond the provision of tattooing and piercing services supplied from the Tattoo Parlour, and if so to what extent?
Issue (ii) – does use of the word PRICK by the Defendants 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?
Common field of trade
Similarities in get-up of shops and online presence
Evidence of misrepresentation
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.