Martinez (t/a Prick) & Anor v Prick Me Baby One More Time Ltd (t/a Prick) & Anor

Passing off protects goodwill, not a monopoly in an unregistered name. Goodwill may attach to a name without associated get-up, but misrepresentation must be assessed globally, including the parties’ businesses, premises and online presentation.

No common field of activity is required, although a substantial difference between the fields makes confusion and damage less likely and imposes a heavy evidential burden. Mere confusion, administrative error, or deception of persons outside the relevant market is insufficient. The claimant must establish deception of a substantial number of ordinary consumers and resulting or likely serious damage.

The claimants operated a tattoo and piercing business in Shoreditch under the name “PRICK” and relied on associated artistic activities and goodwill. The defendants opened a cactus and succulent shop in Dalston using the same word.

The claimants alleged that the identical name, geographical proximity and online presence represented that the defendants’ business was theirs or connected with it. Following a split trial ordered at case management, the court determined whether the claimants’ goodwill extended beyond tattooing and piercing and whether the defendants’ use constituted a material misrepresentation.

1. Applicable principles. The court applied the classic trinity from Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341: goodwill, misrepresentation and damage. Passing off did not confer a positive right to a name or a general right to prevent its use. The protected property was goodwill and reputation liable to be harmed by misrepresentation.
2. Goodwill. Goodwill could attach to the trading name “PRICK” without reliance on get-up. The claimants’ goodwill extended from tattooing and piercing to their pleaded wider visual artistic endeavours, including collaborations and exhibitions, because those activities shared a common artistic vocabulary and were materially connected with the claimant’s tattoo work. It was geographically limited to a relatively local area in Hackney and Tower Hamlets, including Dalston.
3. Misrepresentation. The relevant assessment was global. The very different fields of activity, shop interiors, shop fronts, website presentation and uses of the word “PRICK” materially reduced the likelihood of a trade connection. The absence of a common field was not fatal, but made the burden of proving confusion and damage heavy.
4. Evidence. Evidence from longstanding friends and customers was given limited weight because they were unusually familiar with the claimants. Some online incidents involved confusion or administrative error, rather than actionable deception. Only one relevant consumer, Ellie, appeared to have been deceived, and that confusion did not materially divert business or damage goodwill. A “moron in a hurry” standard could not sustain a passing-off claim.
5. Disposition. The court was not satisfied that a substantial number of relevant consumers believed that the businesses were connected, or that serious damage had resulted or was likely. The use of “PRICK” by the defendants therefore did not constitute a material misrepresentation. The claim failed. Consequential orders were reserved for submissions at hand-down.