Stories

There are significant lessons to be learned for all those in the creative sectors and retail from a judgment handed down on Friday in the IPEC division of the High Court of England and Wales by Master Kaye.  Courtenay-Smith & Anor v The Notting Hill Shopping Bag Company Ltd & Ors [2025] EWHC 1793 (IPEC) (18 July 2025).

The case involves various intellectual property (IP) rights in a logo emblazoned on tote bags that are popular with tourists and locals alike in London’s Notting Hill.  Both the original and the allegedly infringing bags are sold side by side at tourist spots like Portobello Road market.

The claimants alleged trade mark infringement, passing off, and copyright infringement, passing off, and copyright infringement, with the two sets of signs set out below:

In the end, though, the court’s decision turned not on the similarity of the bags, but on difficulties in the claimants’ management and documentation of their IP rights.

The claims

As can be seen from the side-by-side comparison set out above, the claimants’ claims were far from outrageous.  Had their rights been properly maintained and documented, the outcome could have been very different. 

A lot of virtual ink will be spilled on the claim itself, so below is just a very short summary:

Trade mark infringement

• The claimants’ claimed infringement of its 2013 registered trade mark for “the Notting Hill Shopping Bag” in stylised text for “Bags; shopping bags, carrier bags”.  It argued that the defendants’ use of a (strikingly similar) logo for “THE NOTTING HILL SHOPPER BAG”, on tote bags, and sale of those tote bags in the same locations, gave rise to a likelihood of confusion. 
• The defendants’ evidence for its actions was found not to be credible.
• Reading between the lines, it seems likely that the court would have found a likelihood of confusion between the signs, leading to trade mark infringement, if it were not for procedural defects in relation to the relied upon mark.
• The trade mark infringement claim failed purely for procedural reasons: the trade mark had been owned by a company that had been dissolved, so that the trade mark became ‘Bona Vacantia’ (i.e., it passed into the property of the crown).  Once the company was restored, the trade mark would have passed back into the property of the company.  However, the trade mark had lapsed during the period of the company’s dissolution, and the company’s attempts to renew it were found to have been ineffective: the company was not entitled to renew the mark during that period, because at that time it was owned by the crown.  The trade mark was therefore a nullity and could not be relied upon.

Passing off

• The claimants claimed that the defendants’ use of similar logos was likely to deceive the public, leading them to believe that the defendants’ tote bags were the claimants’ tote bags. 
• Again, the court found that the defendants’ explanation for their conduct was not credible.
• But for procedural defects undermining the claimants’ claim to own the relevant goodwill, the passing off claim appears likely to have succeeded.  But the claim failed because the company could not prove that it owned ‘goodwill’ in the earlier sign.  There was no effective assignment of the goodwill in the sign, and in any event the goodwill had been abandoned when the company was dissolved.

Copyright infringement

• The claimants also claimed copyright infringement of the artistic logo (in the stylisation of the words) used on the tote bags.
• The claimants’ logo was found to be an original artistic work, and the claimants owned the copyright.  The defendants had adopted a similar style logo to the claimants’ copyright work.
• However, the claimants’ logo was very simple, and so had a narrow scope of protection; the defendants’ logo was too different to amount to copyright infringement.

Conclusion on the claims

The claimants’ trade mark infringement and passing off claims failed not because they did not have a very strong case in principle, but because of procedural deficiencies.  As a result, the claimants could not rely on their claimed trade mark (which was a nullity) or goodwill (which either did not belong to them, or had been abandoned).

Its copyright infringement claims failed because the defendants’ signs were not similar enough to the claimants’ copyright work, in circumstances were the claimants’ logo was too simple to have a broad range of protection.

Lessons to be learned

The original creator of the Notting Hill Shop Bag, Ms Courtenay-Smith (one of the claimants) had developed an eye catching product with a strong brand message cantered around environmental sustainability, and had a registered trade mark was registered way back in 2013.  It seems to have been a successful product.  So far, so good, as far as the claim was concerned.

However, the claimants made a number of mistakes that cost them dearly.  It is impossible not to feel sympathy for the claimants here: their otherwise strong case, against defendants whose evidence was heavily criticised by the judge, failed for procedural reasons that are little understood by trade mark owners.

The core lesson is this: preparation is key.  

The importance of IP asset management

The case highlights the critical importance of managing trade marks properly.  The original rights holding company was closed down without assigning the trade mark rights and goodwill it owned to a ‘live’ company, which could have been done in a simple written agreement.  

Additionally, the claimants failed to renew the registered trade mark correctly, leading to its expiration and the subsequent nullity of the renewed trade mark.  NB: In our view, there are serious questions to be asked about whether the practice of the relevant division of the crown (the Bona Vacantia Division), which to our understanding asks companies like this one to renew their trade marks, rather than handling it themselves, which is what the court suggests must happen, aligns with this decision.

Ultimately, businesses must:

• Be aware of the impact of winding up a company on their IP rights and take steps to protect these rights before dissolution, including by ensuring that IP rights belonging to the soon to be dissolved company are assigned out to other, ‘live’ companies first.
• Keep an eye on renewal deadlines to ensure that their trade marks do not lapse, and ensure that all procedural formalities for such renewal are conformed to.

Make sure that IP assignments are handled properly

Whilst the assignment of IP can often take place in simple written agreements, it is an area ripe with pitfalls.  This case makes clear that goodwill cannot be assigned ‘in gross’ (i.e., separately from the business).  It is important to ensure that any contracts put in place do not fall foul of key requirements, which could result in such contracts failing to assign the IP altogether. 

Don’t rely on the court’s sympathy just because your IP rights have ‘obviously’ been copied

The Judge was clear that the defendants had known of the design and popularity of original tote bags – i.e., “the Notting Hill Shopper Bag”.  Businesses should be aware that competitors will have no reluctance in copying/closely mirroring the trade marks of your business if it results in a commercial advantage.  Business owners must pre-empt such acts by taking steps to formalise the protection of their IP assets. 

Importantly, just because IP infringement might appear blatant on paper doesn’t mean it will necessarily succeed in practice.  IP is a complicated area, and even the most straightforward looking case may fail, if key procedural steps have not been handled correctly.

Documents and evidence

The case also demonstrates the importance of being legally prepared and having a clear brand protection strategy.  The claimants’ lack of documentation and inconsistent evidence weakened their case, because they presented inconsistent reasons for not having assigned the relevant IP rights.  Whilst not in the end determinative, the defendants’ evidence was found to be unsatisfactory, evasive, and inconsistent – in our view, this may well have contributed to the claimants succeeding, had the procedural errors outlined above not have taken place.

Businesses should think ahead, and maintain thorough and accurate documentation.  When engaging in IP disputes, the gathering and presentation of such evidence is of key importance to maintaining a good claim or defence. 

Copyright infringement

The court found that the defendants’ signs did not substantially copy the claimants’ logo, and therefore, there was no copyright infringement.  It is essential to understand the scope of copyright protection, particularly in relation to simple phrases, and the elements that constitute substantial copying.

 

What do you think about the court's decision? Share your thoughts in the comments below.

If a case worth litigating, then it is worth getting proper legal advice.