Intellectual Property Enterprise Court

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

Fecha: 24-Jul-2025

Joint tortfeasorship for passing off – post-notification

Joint tortfeasorship for passing off – post-notification

158.

The Claimants’ opening written submissions set out their post-notification position as follows (with my comments interpolated):

Passing off: the Claimants allege that Mr Patch was personally aware of the “essential facts” of the tort of passing after 13 April 2020 because he conducted online research into Ms Martin and was made aware of her reputation as an artist. The Claimants submit that knowledge of her reputation is sufficient to attach joint tortfeasorship to Mr Patch from that date. I disagree. Reputation is not the essential fact of the tort of passing off – there must be goodwill (customers) in the United Kingdom. I have no basis for concluding that Mr Patch was aware at any time before 8 December 2021 of Ms Martin’s goodwill in the United Kingdom. Whilst he was aware from his research that she hailed from London, that did not seize him of knowledge of goodwill in the United Kingdom, nor any other elements of a tort that had not at that time been alleged at all, let alone against him. Alternatively, it was put that joint liability stems from 18 June 2020, when the US firm wrote to GM Drinks (and Mr Patch read the letter). Again, I do not consider that to be sufficient given what was (and was not) described in that letter, as I have set out above.

ii)

It is also said that BSH is similarly jointly liable from 13 April 2020 on the basis that Mr Patch was forwarding to them the correspondence he was receiving from Ms Martin’s advisors. Again, I do not consider that to be sufficient for the same reasons. All the focus of Ms Martin’s early correspondence – both personally and through her representatives – was on copyright infringement. Whilst reputation was mentioned, that is not an element of passing off. Goodwill, including goodwill in the United Kingdom, was not mentioned until significantly later, when most, if not all, of the First Label Products had been sold. I therefore decline to find joint tortfeasorship in relation to passing off for the First Label.

iii)

As I have found that the Second and Third Labels do not constitute passing off, there can be no joint tortfeasorship in relation to those labels.

159.

I should add that counsel for the Claimants submitted that the essential facts of the tort of passing off had not been considered in a reasoned judgment of the Court, and that this would be a good opportunity to do so. As the Defendants were unrepresented, and therefore the issue was not fully argued before me, I have declined that invitation. I am therefore not making any finding on what the essential features of the tort of passing off might be for the purposes of assessing joint tortfeasorship. Rather, my finding on the facts of this case is that the Claimants have not succeeded on the basis of what they say the essential facts of the tort are (namely, Ms Martin’s reputation and what the labels on the Products looked like).