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

Knowledge of passing off is not an element of the tort. GM Drinks can therefore be liable for passing off without knowing that it was doing so. As it may arise in relation to joint tortfeasorship, however, I do need to record that, whilst Ms Martin notified Mr Patch on 13 April 2020 of the existence of the Work and her allegations of copyright infringement, that email chain, headed Copyright Infringement, does not mention passing off. The first letter sent from lawyers on Ms Martin’s behalf was from a US firm and sent on 18 June 2020: it threatened civil and criminal penalties under the CDPA, but not passing off. The first letter from English lawyers was sent on 7 October 2020 and purports to be a Pre-Action Protocol compliant letter before action. The allegation of criminal penalties is (rightly) not pursued, but there is no mention of passing off. A further letter from Ms Martin’s then English lawyers on 15 December 2020 also fails to refer to passing off. Passing off was first alleged in a letter from Ms Martin’s (new) English lawyers on 8 December 2021. That letter sets out elements of Ms Martin’s goodwill. It was also the first time that allegations were levelled at anyone other than GM Drinks. Earlier correspondence had attached draft undertakings to be given by GM Drinks and no-one else. The 8 December 2021 letter also made allegations against BSH, and attached undertakings to be given by GM Drinks and BSH. No remedy was sought in relation to Mr Patch.

Mr Patch was first contacted in his own right on 6 January 2022, when a letter before action was sent, attaching undertakings drafted to be given only by Mr Patch on his own behalf, referring to copyright infringement and passing off.

Whilst I have found no copyright infringement and no passing off in relation to the Second Label and the Third Label, I record that these were first raised in correspondence on behalf of Ms Martin on 7 October 2020 and 6 January 2022 respectively. As noted above, the Defendants were advised in October 2020 that the Second Label did not infringe.