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

There were before the Court two instances of UK consumers being misled. Ms Martin said she did not know either of the individuals concerned before their postings.

In one, a Ms Stephanie Kane contacted Ms Martin on or around 18 June 2020 through an online platform, leading to the following conversation, a screenshot of which was in evidence:

“Ms Kane: Hello! Hope you’re ok! I just bought a bottle of wine with what I thought has your work all over the label but I can’t see your name anywhere on the bottle.

[picture of First Label Product]

Is this yours?

Ms Martin: They ripped me off [sad face emoji]

Do you know where you bought it from?

Ms Kane: Ahh no! Sorry to hear that, I wish I didn’t but it now, I was over excited thinking it was yours and yours fairly! I got it from the late night shopper in Stoke Newington London.”

Another UK purchaser posted on or around 24 August 2020 that the First Label Product matched their tattoo, tagging the post with @shantell_martin as follows:

There were said to have been examples prior in time to these two, but Ms Martin did not keep screenshots or other records, so it is not possible to know what was said. I was also asked by her counsel to infer that there were examples after these two: I decline to do so in the absence of any evidence to that effect. By 24 August 2020, Ms Martin was well represented by specialist practitioners, and should have been aware of the need to screenshot and keep any examples of misrepresentation. I therefore reject the claim made by counsel for the Claimants that there were examples from after 24 August 2020 (a claim, I should add, that wasn’t made by Ms Martin herself in her evidence).

These two examples confirm my own view that the First Label is sufficiently close to Ms Martin’s work so as to create a misrepresentation that she has endorsed the First Label Product. It seems to me very likely indeed that anyone within Ms Martin’s goodwill (which I have endeavoured to illustrate and describe above) will consider that Ms Martin has endorsed or otherwise been associated with the First Label Product.

I can find no liability for BSH, however, on the basis that there is no evidence that BSH did anything in the United Kingdom. As I understand the evidence, GM Drinks imported the Products into the United Kingdom. BSH therefore undertook no acts in the United Kingdom to which passing off could attach. I can see the attractiveness to a claimant of the notion, set out in Wadlow, that it is not necessary with an inherently misrepresentative product to claim joint tortfeasorship, but rather strict liability attaches to each supplier in the chain. Without deciding the point, that may well be the case when those acts all happen in this jurisdiction. But the importation by GM Drinks of the Products into the United Kingdom does not retrospectively make unlawful something which may well have been lawful in Argentina (and as no evidence of Argentinian law was adduced before me, I do not make any such finding). I return to joint tortfeasorship for passing off below.

I do not consider that the Second Label or the Third Label amount to misrepresentations. I do not consider they are sufficiently similar to Ms Martin’s work, nor to the Claimants’ definition of The Style, to constitute a misrepresentation. This is because:

In my judgment, no “not insignificant section” of Ms Martin’s market would consider that she was involved in the Second Label or Third Label products. I am fortified in this conclusion by the absence of any evidence from independent consumers. Whilst of course this is not necessary for a finding of passing off, the various points of contact in relation to the First Label demonstrate that misled consumers did in fact get in touch – evidence of misrepresentation was possible to obtain. In relation to the Second and Third Labels, there was none, in circumstances where considerably larger volumes of the Third Label Product were sold in the United Kingdom than of the First Label Product. Whilst not determinative, this accords with my view of the evidence before the Court.

Counsel for the Claimants asked me to draw adverse inferences against the Defendants for failing to disclose the instructions to the designer, Mr Milia, in relation to the Second and Third Labels: Wade v Singh [2024] EWHC 1203 (Ch) at paragraphs 47 to 54; Ebofi v Royal Mail Group Limited [2021] UKSC 33 at paragraph 41. It was submitted to me by the Claimants’ counsel that in the absence of those disclosed documents, I should draw the adverse inference that those instructions must have been “[r]emove the most offensive bits but keep as much as you can”. I do not consider that that submission assists the Claimants. First, any adverse inference is available only against BSH. This is because it was the party which instructed the designer and therefore would be likely to have any relevant documents. I have found BSH not to be liable for passing off in relation to the First Label because it carried out no relevant act in the United Kingdom, and that is also true in relation to the Second (and Third) Label. No adverse inference can be drawn against Mr Patch or GM Drinks. Further, even if I accept that the instructions to Mr Melia said what counsel for the Claimants alleges, that does not establish passing off – rather, such a comment reads to me like a defendant trying to design around a perceived problem (which is permissible), as opposed to a defendant trying to create a misrepresentation. I therefore decline to draw such an inference and can find no evidence of an intention to deceive, but, if I am wrong in that, it would not, on the facts of this case, have assisted the Claimants in any event.

I was also asked to draw adverse inferences against BSH from the fact that around 5 January 2021 BSH considered 5 other designs for the Third Label, all of which were further away from Ms Martin’s work than the label eventually adopted. It was submitted that BSH could readily have adopted any of those other designs, but chose the one closest to Ms Martin’s work. Again, this does not, as counsel for the Claimants conceded, assist the Claimants against GM Drinks or Mr Patch, and BSH undertook no relevant acts in the jurisdiction. It is relevant that, by this time, the Defendants had received advice from an English-qualified specialist intellectual property practitioner that the Second Label did not infringe. I can find no intention to deceive in the conduct shown in this document.

Finally, counsel for the Claimants submitted that the Second and Third Labels were more likely to amount to passing off because of the possibility that they would appear on a retail shelf alongside the First Label (which I have found to constitute passing off). I reject this argument. First, on the facts before me, given the rapid turnover of the Products in issue, it seems to me factually very unlikely that First, Second and/or Third Label Products would have ever appeared next to each other on shelves (and there was no evidence that they did). Further, even if they had, they are sufficiently different that I do not consider it likely that consumers would have been misled in relation to the Second and/or Third Label because of any proximity to the First Label, and there was no evidence to that effect.