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

As is usual in the IPEC, I had settled the List of Issues at the CMC. At the time, GM Drinks and Mr Patch were represented by specialist intellectual property counsel. Given no further concessions by the Defendants, the List of Issues at trial remained as follows (adopting the definitions set out above – additionally, The Style was defined in the Particulars of Claim – I return to this definition below):

“Copyright Subsistence

1.

Does copyright subsist in the Work under the CDPA?

2.

Is Found the Found the owner of any copyright identified in paragraph 1? If so:

a.

On what date did Ms Martin assign her copyright in the Work to Found the Found?

b.

Was the above-mentioned assignment total or partial?

c.

Is Ms Martin still the owner of any copyright in the Work?

Copyright Infringement

3.

Is the First Label a copy of the Work or of a substantial part of the Work?

4.

If yes, has the Second and/or Third Label been copied from the First Label, such that they or either of them constitute a substantial copy of the Work?

Passing Off

5.

Does goodwill subsist in [T]he Style in the UK, including as generated by the endorsement of products sold by reference to the Style in the UK?

6.

Is the goodwill in paragraph 5 owned by Ms Martin?

7.

Have the Defendants misrepresented that their goods are connected in the course of trade with Ms Martin’s business?

8.

If so has such misrepresentation caused Ms Martin damage?

Joint Tortfeasorship

9.

Are the Defendants or any combination of them joint tortfeasors in respect of (i) copyright infringement, and (ii) passing off, such that they are jointly liable for any of the acts alleged?”

At the CMC, I declined to include in the list of issues for trial copyright infringement under Argentinian law. As all the Products were imported into the United Kingdom where GM Drinks was the sole distributor, there was nothing to be gained by adding Argentinian copyright law to the trial – rather, it could have required expert evidence of Argentinian law, extending the trial for no purpose. Parties are reminded that the IPEC is a lower-cost jurisdiction for intellectual property disputes, particularly those involving small-to-medium-sized enterprises. That involves claimants trimming their sails and not running every point that may be open to them. Proportionality is key.

Two issues were argued in the Claimants’ opening written submissions that are not apparent from the List of Issues – moral rights infringement and flagrancy damages. It should be noted that the Order for Directions I made at the CMC stated “[t]he trial shall determine only issues of liability, namely those set out in the schedule to this order”. Thus, the parameters of the trial were set, clearly, at the CMC, and no permission has been sought since to add moral rights infringement or flagrancy damages to the list of issues to be decided.

The IPEC Guide notes (emphasis added):

“The CMC is a particularly important part of IPEC procedure. No material may be filed in the case by way of evidence, disclosure or written submissions unless permission is given by the judge. The first and last opportunity to obtain such permission is likely to be at the CMC. Save in exceptional circumstances the court will not permit a party to submit material in addition to that ordered at the CMC (Part 63 rule 23(2)). A cost-benefit test is applied to the filing of material in support of a case, see PD 63 para 29.2(2). It is important that before the CMC the parties have given full consideration to the following:

The issues

The issues in dispute. These should clearly emerge from the statements of case. The parties must draw up a list of issues which the court will have to resolve at trial. It is not necessary to list every sub-issue that may arise and this should not be done. The parties will be permitted to argue at trial any point which is both covered by the pleadings and which the opposing side should reasonably contemplate as falling within one or more of the listed issues. The trial judge may refuse to hear argument at trial on a point which does not satisfy those criteria.”

Angela Fox notes in Intellectual Property Enterprise Court: Practice and Procedure (3^rd edition, 2021, Sweet & Maxwell) at para 5-028 (footnotes omitted):

“Case management in the IPEC is issue-based and it is therefore essential for the judge to be able to identify the issues at the CMC. … The list of issues should address the core issues in dispute in the case… .

The issues in the list should emerge from the statements of case, and only points which are covered by the statements of case and which the opposing parties may reasonably contemplate as falling within the list of issue will be permitted to be argued at trial. It is therefore important to ensure that the list of issues is comprehensive. On the other hand, though, the court does not require parties to identify every sub-issue, and in fact discourages this practice; if the main issue has been identified and the sub-issue would clearly flow from it, the main issue is likely to be sufficient for the list of issues. As observed by the court in Mei Fields Designs Ltd v Saffron Cards & Gifts Ltd, lists of issues are not intended to be construed ‘as if they were statutes or contracts – they are there for the purpose of narrowing disclosure and the evidence filed by the parties, and as a useful guide to the tribunal of the issues to be decided.’”

I respectfully agree with Ms Fox’s comments.

Whether or not the IPEC deals at trial with a matter not listed in the List of Issues is a matter for the relevant judge on each occasion. I do not seek here to make a hard and fast rule. The List of Issues is ordered at the CMC for a reason – it enables the Court to narrow the issues between the parties at that stage of proceedings, so that costs are not wasted preparing for things that will not be determined at trial. It tells the parties in proceedings (many of whom are unrepresented) what their evidence should address and what they can expect to have to deal with at the trial. That is a key point in this case. BSH made the decision not to attend the trial on the basis of the List of Issues it expected to face. Mr Patch attended the trial on his own behalf and on behalf of GM Drinks having been provided with that List of Issues. He was not in a position to take objection to different issues being raised in the Claimants’ skeleton argument. It would therefore be unfair, in my judgment, to allow these issues to be pursued by the Claimants against that clear factual background. I do not consider that either moral rights infringement or flagrancy damages falls under any of the headings set out in the List of Issues: I cannot see how the Defendants could reasonably contemplate that those matters fall within the List of Issues.

In relation to the copyright claim, this is brought only on behalf of Found the Found, the owner of the copyright. The List of Issues states:

“3.

Is the First Label a copy of the Work or of a substantial part of the Work?

4.

If yes, has the Second and/or Third Label been copied from the First Label, such that they or either of them constitute a substantial copy of the Work?”

Moral rights are not raised in terms, nor is Ms Martin’s interest as the author referred to (as opposed to Found the Found’s interest as the copyright owner).

The flagrancy claim (which is said to apply to both copyright infringement and passing off) is not mentioned at all in the List of Issues. It requires the determination of who knew what when, in relation to the three Defendants and three different wine labels imported into the United Kingdom over an approximately 4-year period. That is not a simple determination that can be read into the copyright or passing off claims. It has two additional difficulties. First, paragraph 44 of the Defence filed by GM Drinks and Mr Patch expressly notes “there are no particulars of flagrancy, and accordingly, the Relevant Defendants reserve the right to respond more fully to such allegations on receipt of full particulars thereof”. This also appears in the Defence of BSH. The Replies filed by the Claimants state in response to paragraph 44 of the Defence filed by GM Drinks and Mr Patch “the First Label is almost an exact copy of the Work, and the Second and Third Labels were each created based upon the First Label after the Defendants were put on notice of the allegation of infringement. It is noted that D1 admits that it was put on notice of the allegations of infringement”. The Replies do not, in my judgment, take matters further on flagrancy. So there was an existing pleading point taken by the Defendants that was not adequately addressed by the Claimants, such that the Defendants were entitled, in my judgment, to assume that the point was not being pressed at trial because it was not included in the List of Issues.

Second, whilst flagrancy can be dealt with at the liability trial (and there will often be good reasons to do so), it can also be dealt with at any quantum hearing which follows. This heightens the likelihood that the Defendants could not have been expecting to deal with the issue at the liability trial.

Therefore, I do not consider that these issues should be determined – it is too late for the Claimants to raise them now, and, had permission been sought, I would have refused it for the reasons I have set out above. However, in case I am wrong in that, I have set out below briefly my judgment on moral rights infringement and flagrancy.

I add one further comment. As is clear from the above, parties should not expect to be able to run at an IPEC trial points which are not within the List of Issues, and should draw to the Court’s attention if they seek to do so because permission needs to be sought. It is not appropriate for a party simply to present new issues without permission, particularly, but not only, when the other parties are unrepresented. Permission should usually be sought well in advance of the trial. In many cases, by the trial, it will already be too late for the Court to entertain new issues, given that there is unlikely to have been disclosure or evidence on the topic, and the trial timetable will have been set.