30/05/2018
Henry Hate, celebrity tattoo artist and owner of the Prick tattoo parlour in Old Street, has recently lost the passing off claim he brought in the UK Court against Gynell Leon and her Dalston-based cactus shop, also named Prick.
These proceedings stand as an example of the difficulties in relying exclusively on unregistered trade mark rights. The outcome sought by Henry Hate would have been far more achievable had he owned a registration for his trade mark for a wide range of services.
Background
Henry Hate is well known for the tattoos he has created and applied to celebrities, the most famous example being the distinctive full-length pin-up girl on Amy Winehouse’s upper right arm. Other famous clients include Pete Doherty, Boy George and Alexander McQueen. He has been working out of his Shoreditch tattoo parlour, called Prick, for 15 years.
In July 2016, Gynell Leon opened her cactus and succulent-plant shop, also named Prick, less than a mile away on Kingsland Road in Dalston, London.
Passing off is a common law in the UK which can be used to enforce unregistered trade mark rights. It does so by protecting trader’s goodwill from misrepresentation. For a passing off claim to succeed the Claimant will need to prove what is known as the ‘classic trinity’:
- The Claimant’s goods or services have acquired goodwill in the market and are known by some distinguishing name, mark or indication;
- There is a misrepresentation by the Defendant, whether or not intentional, which has led or is likely to lead, the public to believe that goods or services offered by the Defendant are goods or services of the Claimant, or connected with them; and
- The Claimant has suffered, or is likely to suffer, damage as a result of the erroneous belief engendered by the Defendant’s misrepresentations.
In his claim, Hate argued that misrepresentation had arisen from the combination of an identical trading name and the close geographical proximity between his and the Defendant’s premises. He maintained that damage is likely to occur through a direct loss of business resulting from customer confusion, and that his edgy rock ‘n’ roll Prick brand will be tarnished by association with the clean-living millennial style of the Cactus shop.
Goodwill and different fields of trade
An obvious difficulty for the Claimant lay in the quite different nature of his business to that of Ms Leon’s cactus shop.
A common field of activity between a Claimant and a Defendant is not strictly necessary, but the absence of one is highly relevant; when there is no common field of activity the burden of proving misrepresentation and damage is a heavy one.
The first question that the Court sought to answer was whether any of Hate’s goodwill associated with the word Prick extended beyond the provision of tattooing services supplied from his London tattoo parlour. Hate argued that his goodwill accrued in the word Prick applied to activities other than tattooing and was spread farther than London, citing his career as a visual artist, his fame for celebrity tattoos and his design collaborations with brands such as Fred Perry, Converse and Nissan Motors, amongst others.
However, the court noted that these world-famous brands had approached Hate to work with them because of his reputation for tattooing celebrities, in particular his association with Amy Winehouse. Although Hate and his tattoo parlour may have a reputation which extends more widely than London, goodwill attaches to trading, not reputation. Therefore, in her assessment of this goodwill, Judge Melissa Clarke looked only at the trading activity that had taken place under the name Prick.
Hate’s goodwill in the word Prick was found to be limited to the provision of tattoos and piercings, and geographically limited to the local area of his tattoo parlour, namely, the Boroughs of Hackney and Tower Hamlets.
Misrepresentation and Get-Up
The Court’s next objective was to determine whether the use of the word Prick by Ms Leon amounted to a misrepresentation that her goods were those of Henry Hate, or were authorised by or connected to him.
As the owner of a registered trade mark, you are legally entitled to stop someone else from using or registering a trade mark which is likely to confuse the public that their goods or services are yours. If your mark has a reputation, you can argue that there is damage to your registered mark if the later party uses on goods or services dissimilar to those covered by your registration. These concepts are not the same as the misrepresentation needed for a successful passing off claim.
The evidence submitted by the Claimant did not convince the Court that misrepresentation had occurred, because it demonstrated only examples of public confusion. For instance, Hate’s tattoo studio once received a phone call from the Royal Horticultural Society that was meant instead for Ms Leon’s shop; and in a similar manner, one of Hate’s satisfied customers left a review of his studio and their new tattoo on Ms Leon’s website.
The Claimant argued that, in addition the identical name of each shop, a further connection between the two businesses is caused by the allusive nature of the pun inherent in each name. Judge Melissa Clarke did not follow this line of reasoning, proposing instead that it was more likely that someone encountering each sign will come very quickly to an appreciation that the name refers to the specific properties of either cacti or tattooing and, as the case may be, appreciate the humour, while grasping the exact nature of the goods and services offered by the shop in question.
In situations such as this, when the nature of the businesses are so far apart, the presence of identical trading names is not sufficient to determine that there has been a misrepresentation. A global assessment must be made of the whole of a trader’s get-up. Here, striking dissimilarities in the get-up of premises and websites weakened the Claimant’s case.
Prick, the tattoo parlour, is described as having a dark interior and full of an eclectic mix of objects and ephemera on display, rock ‘n’ roll memorabilia, and merchandise for sale. The outside of the shop is black with the word ‘Tattoos’ painted in tattoo-like lettering, and a neon sign of the word Prick displayed in the window.
Prick, the cactus shop, is a bright, white-walled and wooden floored shop, containing large numbers of cacti and succulents of varying sizes in the window display, on wooden shelves and across the floor. It is described as “a minimalistic a space as can be achieved within the constraints of the display of around 100 or more cactus”.
Account must also be made of the parties’ respective online get-ups. Ms Leon’s website has a minimal, clean, white style illustrated with numerous photographs of cactuses; much in keeping with the aesthetic of their shop, and containing no references to tattooing services. Hate’s website is clearly that of a tattoo parlour, with no suggestion of a connection to cacti.
After stating that “it is difficult to imagine more dissimilar-looking shop fronts or retail spaces”, Judge Melisa Clarke decided that the evident dissimilarities in get-up were highly relevant to her overall judgment that there had been no misrepresentation that the goods and services offered by the Defendant are those of the Claimant or somehow connected with the Claimant.
Comment
Passing off does not give you a proprietary right in the name of your business, nor does it give you a right to prohibit the use of that name by others in unrelated fields. These legal rights may however be available if you register the name as a trade mark, considering the law protecting not only the goods and services for which registration is secured but also the wider concept of coat-tailing or brand-tarnishment by someone’s unauthorised use of the mark of the registration on dissimilar goods or services.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
