Intellectual Property Enterprise Court

IP-2023-000120 - [2025] EWHC 1793 (IPEC)

Fecha: 18-Jul-2025

Chronology in relation to Issue 1(a)

Chronology in relation to Issue 1(a):

Date	Event	Comment
2008-2010	NC-S develops the Logo and starts to sell the Claimants’ Bag wholesale on Portobello Road	Claimants’ Bag initially sold wholesale by NC-S personally before the Restored Company is set up in 2010
6 April 2010	Incorporation of the Restored Company	NC-S director and shareholder. Claimants’ Bag continues to be sold wholesale now through Restored Company
May 2013	Organic Hill incorporated	CA’s company used as a wholesaler for the Claimants’ Bag and continuing to trade
2 May 2013	Application for the Trade Mark	Applicant is the Restored Company
11 October 2013	Trade Mark registered
3 June 2017	Email between NC-S and CA about the future of the Claimants’ Bag business
7 June 2017	Email NC-S to CA about the transition of the business
13 June 2017	NHBCL incorporated
16 December 2017	The Restored Company’s accounts to 31 August 2017 are signed by NC-S
23 January 2018	Notice of proposed dissolution of the Restored Company.	The notice specifically records “Upon dissolution all property rights vested in, or held in trust for, the company are deemed to be bona vacantia and accordingly belong to the Crown.”
10 April 2018	The Restored Company is dissolved	The IP rights including the Trade Mark pass Bona Vacantia
January 2023	Prior to 10 January 2023 NC-S confronted Defendants at 93 Portobello Road about their sale of the Defendants’ Bags
January 2023	Prior to 10 January 2023 NC-S/NHBCL discover that the Trade Mark is still registered in the name of the Restored Company.
10 January 2023	Letter: Briffa to Bona Vacantia Department (“BVD”) of Government Legal Department on behalf of NC-S	NC-S seeks to assign the Trade Mark to herself.
11 January 2023	NC-S applied for a trade mark
30 January 2023	BVD email Briffa	BVD explain that NC-S will either need to restore the Restored Company or purchase the Trade Mark.
16 February 2023	Part 8 application to restore the Restored Company submitted to court (“the Application”)	Application made by NC-S as director and shareholder
7 March 2023	Application is issued.	The purpose of the Application is said to be to enable the Trade Mark to be assigned to NC-S
22 March 2023	CA applies to renew the Trade Mark by filing a TM11 (“the Renewed Trade Mark”)	“it is understood that the email from UKIPO was in [NC-S] name. However, I completed the renewal of the trade mark on behalf of [NC-S] and the company.” CA1 at [33]
2 May 2023	Trade Mark expires
23 August 2023	Organic Hill assigns any IP rights or goodwill associated with the Brand or Logo to NHBCL	However, Organic Hill continues to trade the Claimants’ Bag
7 September 2023	Restoration order
12 October 2023	Restoration order registered at Companies House
22 October 2023	Restored Company assigns the Renewed Trade Mark to NC-S
22 October 2023	NC-S assigns the Renewed Trade Mark to NHBCL
2 November 2023	End of 6-month grace period to apply to renew Trade Mark
21 November 2023	Duncan Gordan assigns all IP rights in the Logo to NC-S
24 November 2023	Claim issued
2 May 2024	End of period to apply to restore the Trade Mark

112.

It is common ground that when the Restored Company was dissolved on 10 April 2018 the Trade Mark had not been assigned or transferred out of the Restored Company. It remained an asset of the Restored Company which then vested in the Crown bona vacantia.

113.

NHBCL’s pleaded position was that there was a joint venture between the Restored Company, NC-S and NHBCL which came into existence in about June 2017 and prior to the dissolution. For the purposes of this joint venture NHBCL and Organic Hill had a licence from the Restored Company to use the Trade Mark, as licensee, for the purposes of the pleaded joint venture and had continued to use the Trade Mark in the course of business after the dissolution (POC [6] and [11]). This would have been a bare licence/permission to use the Trade Mark. This presented a number of insurmountable problems for NHBCL and was not pursued.

114.

In short: (i) any licence to use the Trade Mark would have to have been in writing pursuant to section 28(2) TMA 1994 and NC-S accepted there was no written licence; (ii) the Crown would have stepped into any licence in place of the Restored Company as licensor which would have passed bona vacantia on dissolution: any bare permission to use the Trade Mark would not have bound the Crown (iii) any licence would have fallen away/had no purpose in any event when the Trade Mark was not renewed and (iv) NHBCL rightly abandoned any argument that there had been a joint venture in closing.

115.

NHBCL argued in the alternative that it had become the beneficial owner of the Trade Mark having taken over the business and/or having used and continued to use the Trade Mark before and after dissolution. This is not its pleaded case which relied on a joint venture having come into existence on about 7 June 2017 through which NHBCL had permission to use the Trade Mark. NHBCL does not plead that the Trade Mark or the business were assigned to it prior to dissolution. Instead, the beneficial interest was said to arise on the basis of a combination of what was said to be an intention to assign the Trade Mark to NHBCL prior to dissolution and continued use before and after dissolution.

116.

NHBCL therefore argued that this combination of an intention to assign and use was sufficient to create a beneficial interest in the Trade Mark which had passed to it in equity leaving only the legal title to pass to the Crown bona vacantia. For the reasons set out below I do not accept this analysis of the position but even if the Trade Mark had somehow passed to NHBCL in equity that did not entitle CA to apply to renew the Trade Mark, whether on behalf of NHBCL, the Restored Company or NC-S on 22 March 2023 for the reasons set out below.