Intellectual Property Enterprise Court

Claim No: IP-2022-000053 - [2025] EWHC 1827 (IPEC)

Fecha: 24-Jul-2025

Background Facts

Background Facts

41.

The following background facts were either not seriously contested, or were obvious from the face of the documents before me:

Ms Martin designs, sells and endorses products which feature her artwork. These are advertised and sold around the world, including in the United Kingdom. She has an online shop where she sells original artworks, prints, books, t-shirts and tote bags. She has an extensive online presence.

ii)

In early 2018, BSH instructed a Mr Guillo Milia to design a label for bottles of wine to be exported by BSH from Argentina and imported by GM Drinks into the United Kingdom. Mr Milia sent draft designs to BSH on 14 May 2018, including the First Label. Mr Milia invoiced BSH for the First Label in two equal parts on 2 March 2019 and 23 October 2019.

iii)

GM Drinks imported First Label Products into the United Kingdom at some point after 1 January 2020. The dates are difficult to discern from the documents, including because a summary document provided by the Defendants is clearly wrong at least in part (as was acknowledged by Mr Patch in cross-examination). It is not necessary for me to decide the exact dates and quantities, as that will be a matter for any damages enquiry (on which I comment further below). However, doing the best I can based on the documents before me, it seems to me that 18,480 bottles of First Label Product were imported by GM Drinks into the United Kingdom. These were largely purchased and imported by GM Drinks prior to 13 April 2020 (when Ms Martin set out to GM Drinks her rights in the Work) although it is possible that a small shipment arrived in the United Kingdom after that date. I also take into account Mr Patch’s uncontested evidence (which, to me, appears to be a common sense business proposition) that GM Drinks aimed to have wine in its possession for as limited a period as possible – from landing in the United Kingdom, GM Drinks’ preference was for the wine to be with the wholesalers or retailers within 12 weeks (to which I return below).

iv)

GM Drinks possessed the First Label Product in the United Kingdom, exposed and offered it for sale, and sold it to a range of customers. All 18,480 bottles of First Label Product were sold by GM Drinks, at an approximate price of £1.90 per bottle. At least 12,600 bottles of First Label Product were sold by GM Drinks prior to 13 April 2020. It is possible that sales of small quantities continued thereafter, but unlikely, in my judgment, much beyond the end of 2020. GM Drinks’ total profit on First Label Products was said to be £924.00.

Ms Martin first wrote to GM Drinks by email on 12 April 2020 having been alerted to the First Label Products by at least one consumer in the United Kingdom. Ms Martin and Mr Patch (on behalf of GM Drinks) engaged in correspondence during which Ms Martin set out her (then) rights in the Work (the assignment to Found the Found happened later). Mr Patch passed that correspondence to BSH. Mr Patch looked into Ms Martin online, including watching a YouTube video about her and her work.

vi)

Ms Martin also contacted retailers of which she became aware, who stopped purchasing the Products from GM Drinks.

vii)

Following Ms Martin’s complaint to GM drinks, BSH asked Mr Milia to redesign the label. Those instructions are not before the Court. Mr Milia emailed a proposed new label design to BSH on 29 April 2020. This resulted in the Second Label. Approximately 22,680 bottles of Second Label Product were imported into the United Kingdom by GM Drinks, possessed, offered for sale and sold in a period of approximately 2 September 2020 to 18 August 2022. These were sold by GM Drinks at an approximate price of £1.90 per bottle. The profit made by GM Drinks on Second Label Products was said to be £1,134.00.

viii)

Ms Martin’s lawyers complained about the Second Label by letter of 7 October 2020. The Defendants’ then representative responded on 21 October 2020 saying that “retailers are out of stock of [the] First Label” and denying that the Second Label infringes Ms Martin’s copyright in the Work. This representative was a Chartered Patent Agent regulated by IPREG. A further letter of 5 January 2021 sent on behalf of GM Drinks offered to give undertakings not to sell the First Label Product.

ix)

Given Ms Martin’s complaints about the Second Label, BSH asked Mr Milia to redesign it. The Third Label was thus designed. Approximately 488,250 bottles of Third Label Product were imported by GM Drinks into the United Kingdom and sold in a period of approximately March 2021 to April 2024. Ms Martin’s lawyers complained about the Third Label in their letter to GM Drinks of 6 January 2022. That letter also notes that the damages sought in relation to all products were “at least USD200,000” based on the licence fee Ms Martin would have expected had BSH asked for her permission.

There was a fourth label in the evidence before me, but it was not mentioned in the trial, and I say no more about it.

xi)

These proceedings were commenced on 29 June 2022. Service out of the jurisdiction on BSH took some time, not being confirmed by the Argentinian court until 7 February 2024. The First Defendant did not contest service out, or jurisdiction.

xii)

The Claimants also sued BSH in Argentina and a mediation took place in Argentina without settling the dispute. I understand from the correspondence that those proceedings could not continue because the Claimants were out of time.

xiii)

The CMC in these proceedings took place on 23 October 2024, when I listed the trial to take place before me on 27 and 28 May 2025.

42.

I also need to say something more about Confidential Exhibit 1 to the Defence of GM Drinks and Mr Patch. This was said to record the sales by GM Drinks of the various Products. Under cross-examination, Mr Patch admitted to some inaccuracies, but it seems to me that there are more than those to which he admitted. He was unable to tell the Court the meaning of the various dates recorded. In relation to the purchase dates (from BSH), for example, the dates do not appear to match the evidence in relation to potential dates on which orders were placed (for example, because 3,500 bottles of First Label Product are assigned a date in 2022 by which time no First Label Product was still being produced). They also do not appear to me to be the dates on which the Products were shipped from Argentina, nor the dates on which they arrived in the United Kingdom. I cannot reconcile what are said to be the purchase dates with the other evidence, and have come to the conclusion that the dates are simply inaccurate.

43.

Similarly, the dates listed for sale of Products to retailers also appear to me not to be accurate – at least, I cannot reconcile them with the other evidence before me. Mr Patch’s oral testimony was that wine would be shipped from South America in 20-foot or 40-foot containers. On arrival these would be delivered either directly to GM Drinks’ clients, or to a warehouse from which the wine would then be shipped by GM Drinks to its clients. Mr Patch gave clear evidence that that would be in a matter of weeks following arrival in the United Kingdom – he aimed for wine to leave the warehouse within 12 weeks, to keep his storage costs down. This is inconsistent with the suggestion that First Label Products were still being provided by GM Drinks as late as 2022 – Mr Patch’s clear oral testimony was that all sales of First Label Products ceased once advised by Ms Martin of her rights in the Work on 13 April 2020.

44.

I am conscious that the Confidential Exhibit was attached to the Defence at the time GM Drinks and Mr Patch were represented, but I am unable to rely on it because I find it to be inaccurate. It would, in my judgment in the circumstances of this case, be manifestly unjust to hold two unrepresented defendants to a document which is so clearly wrong. However, it likely has little impact for present purposes. It is admitted by the Defendants that the First, Second and Third Label Products were all imported by GM Drinks into the United Kingdom, and in quantities which, whilst not beyond question, appear to be accurate. Where the inaccuracy apparently lies is in the dates. It has thus not been possible for me to determine exactly when each of the First, Second and Third Label Products were sold, but, as it turns out, that is likely to matter much less than it appeared at the trial that it might, for the reasons I set out further below.