‘The Notting Hill Shopping Bag’ or ‘The Notting Hill Shopper Bag’. Easily distinguishable? Well recently the court had to decide this very issue in a dispute involving tote bags using logos for ‘the Notting Hill shopping bag.’ and ‘THE NOTTING HILL SHOPPER BAG.’.
The case highlights the critical need for brands to proactively manage their IP portfolios and stay on top of both ownership and renewal of their IP rights. A key takeaway is the application of the legal doctrine (known as bona vacantia) that when property has no owner, ownership of the property passes to the Crown, which raises important issues regarding the ownership and management of IP rights when a company is dissolved and the risk that the IP rights can inadvertently be left unclaimed – and therefore unprotected.
Images taken from judgment Courtenay-Smith and Ors v The Notting Hill Shopping Bag Company Limited and Ors [2025] EWHC 1793 (IPEC)
Background
In 2008/2009, Ms Courtenay-Smith began selling tote bags featuring a ‘the Notting Hill shopping bag.’ logo to traders on Portobello Road.
In April 2010, she incorporated ‘The Notting Hill Shopping Bag Company Limited’ (the “Original Company”) and, in October 2013, the Original Company registered a UK trade mark for the Notting Hill shopping bag (the “UK Trade Mark”).
In June 2017, a wholesaler of the bags incorporated ‘The Notting Hill Bag Company Ltd’ (the “Second Company”). There was said to be a gradual transition of the business from the Original Company to the Second Company during 2017/2018. In April 2018, the Original Company was voluntarily dissolved and its assets passed to the Crown as bona vacantia.
In November 2022, two brothers (Nangialai and Ehsanullah Takanai) incorporated ‘The Notting Hill Shopping Bag Company Limited’ (which had been the name of the dissolved Original Company) and ‘The Notting Hill Shopper Bag. Ltd’ selling tote bags with a ‘THE NOTTING HILL SHOPPER BAG.’ logo.
When Ms Courtenay-Smith and the Second Company sought to enforce their trade mark rights and claim for passing off, they discovered that the UK Trade Mark had not been transferred out of the Original Company before the Original Company had been dissolved. As a result, Ms Courtenay-Smith restored the Original Company (as of October 2023), on the basis that she had an interest in the company’s intellectual property assets, and attempted to transfer the trade mark to the Second Company (in general, once a company is restored, this will also restore its former property).
The claimants then sued Nangialai and Ehsanullah Takanai along with The Notting Hill Shopping Bag Company Limited and The Notting Hill Shopper Bag. Ltd (both of which had been incorporated by them) for trade mark infringement, passing off, and copyright infringement.
The Outcome: No Infringement
The Court dismissed all three claims. It decided that:
- The UK Trade Mark was invalidly renewed and could not have been transferred to the Second Company – When the Original Company was dissolved in April 2018, its assets (including the UK Trade Mark) passed to the Crown as bona vacantia. Only the Crown (as proprietor) could have renewed the UK Trade Mark or authorised its renewal. As such, an attempt to renew the UK Trade Mark in March 2023 by a director of the Second Company, was invalid because authorisation from the Crown had not been sought.
Whilst the claimants restored the Original Company in October 2023, by this date the UK Trade Mark had already expired (in May 2023) so there was no trade mark to be restored to the Original Company. There is a six-month grace period to renew a UK trade mark after its registration has expired, but the Original Company did not seek to rely on the extension period to validly renew the mark. Furthermore, when the application to restore the Original Company was made, no permission had been sought for the Original Company to renew the trade mark or extend the period for doing so.
As a consequence, the absence of the trade mark being registered meant that there could be no trade mark infringement and so the claim failed.
In any case, even if the UK Trade Mark had been validly renewed, the defendants could have applied to cancel the UK Trade Mark for non-use. In the UK, trade marks can be “revoked” or “partially revoked” for any goods and services for which they have not been used consistently for a five-year period. This right of cancellation exists to ensure that the trade mark register accurately reflects marks that are genuinely used by brands in commerce. As a result, non use vulnerability is often exploited by defendants in infringement proceedings.
- The Second Company had not established sufficient goodwill for passing off – The passing off claim was also unsuccessful because the Second Company had not established the necessary goodwill in the brand at the relevant time. Had the Original Company transferred its business together with goodwill to the Second Company, and the Second Company had continued trading under the same name and brand, all existing goodwill would have accrued to the Second Company. Consequently, the Second Company would have been able to rely on such goodwill to support its passing off claim. However, in this case, any goodwill generated by the Original Company was lost (treated as abandoned) on the Original Company’s dissolution in 2018 when the Original Company stopped trading, and no transfer had been made to preserve it. There was an attempted transfer in 2023 but this was too late – by this stage there was no goodwill to transfer (the general principle being that goodwill cannot exist on its own and must always attach to a business). While the Second Company could show limited trading activity from 2018 (the date of the dissolution of the Original Company) to 2022 (when the defendants started selling the tote bags), it was not enough to support the passing off claim.
- There was no copyright infringement of the logo – Ms Courtenay-Smith had artistic copyright in her logo design e.g. she made certain creative choices including that of left justification over 4 lines, the use of lower-case t, a missing dot over the “i” in “shopping”, a “bold and modern” font (chosen from a myriad of fonts available), and a full stop at the end. The claimants also put forward as evidence, a design document which showed alternative iterations of the logo, in order to demonstrate the originality of the logo and creativity involved in its design. However, the logo did not display a high degree of creativity and its design was very simple. Consequently, the scope of copyright protection was narrow and an infringer only needed to make minor changes to avoid infringement. While similar, the defendants’ logo differed in enough ways (including font, capitalisation and the text layout over 3 lines) for the defendants to be found not to have copied a ‘substantial part’ of the original logo – the threshold for copyright infringement had not been met!
Top Tips from this case for businesses owning IP
Maintain IP Records – Keep an up-to-date record of all IP rights owned and used by your brand and diarise all renewal dates, so that important trade marks (and registered designs and patents, if relevant) do not lapse. An IP lawyer can assist and send you reminders.
Due diligence before dissolution – If part of a group restructure involves dissolving a company, ensure IP due diligence is carried out beforehand. All IP must be validly transferred before dissolution. After dissolution, the rights pass to the Crown (bona vacantia), and any subsequent renewal or transfer may then be invalid.
Restoration is risky – It is possible to restore a dissolved company and apply to reclaim its assets, but this may require a court order and there are risks associated with this. For example, expired IP rights and abandoned goodwill will not be revested. Similarly, buying back assets from the Crown may not be straightforward and requires additional payment.
Use it or lose it – Ensure that any trade marks are put to genuine use within the relevant period, so that they are not liable to be revoked for non-use. Keep clear records of such use.
Simplicity is harder to protect – ‘Quiet luxury’ and minimalism may be on trend, but keep in mind that, as this case shows, simple logos and designs benefit from more limited copyright protection. There are also certain difficulties faced when trying to claim copyright infringement rather than seeking to enforce registerable rights.
To demonstrate copyright infringement, it is necessary for a claimant to show that they own the copyright in an original work, and a substantial part of that work has been copied by an infringer. When claiming for copyright infringement rather than infringement of registered rights, it can be more difficult to prove ownership of rights, it is necessary to show that a work is sufficiently original to qualify for protection, protection can be more narrow and uncertain, and enforcing rights will require evidence of copying. Where designs are simple, proving copying may be challenging because similarity could be coincidental and minor differences may be enough to avoid infringement if a ‘substantial part’ is not deemed to be copied. For these reasons, brands should seek advice as to the most appropriate way to protect such logos or designs. This will often be by registration as a trade mark or a design.
Authors
Charlotte Kong
Senior Associate
Scott Steinberg
Legal Director
Lucy Marlow
Partner
Stephen Sidkin
PartnerRelated legal expertise
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