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

I have already considered aspects of the evidence and made findings relevant to the copyright claims earlier in this judgment and they come back into account here.

The law on subsistence in relation to copyright is governed by the CDPA 1988 at ss. 1, 4, 9 and 11. For there to be artistic copyright it must be original in the sense that it is its author’s own intellectual creation (see Infopaq International A/S v Danske Daglades Forening (C-5/08) EU:C:2009:465;). But the test is not about artistic merit but rather about making free and creative choices (Painer v Standard Verlags GmbH (C-145/10) EU:C:2011: 798).

The question of whether there is artistic copyright is objective, but the burden of proof lies with NC-S. Given the nature of the artistic work in issue it is necessary to consider the work for which artistic copyright is claimed as a key part of the evidence in support of the claim.For the copyright claim, only the Logo is relied on.

In about 2008/2009 NC-S says that she created the Notting Hill Shopping Bag Logo. NC-S explained that the idea of the bag was in her head at the time when her son was born in September 2008. She explained that the graphic design process came alive later in 2009.

She explains that the idea for the Logo and the tote bag came to her because of the convergence of a number of ideas at the same time. The idea of the need to reduce the use of plastics/plastic bags which was beginning to gain some traction, her brother’s use of a tote bag at his shop in Cornwall to reduce plastic waste, meeting Anya Hindmarch who was the designer behind a tote bag with the Logo “I’m Not a Plastic Bag” and the desire to create something that could serve locals and tourists. NC-S explains that the Notting Hill Shopping Bag was conceived as a community project. Mr Barr explains that it was supported by both the Association and Mark Atkinson who was the manager of the Royal Borough of Kensington & Chelsea Market Office.

NC-S explained that she wanted to create something simple but impactful. She enlisted the assistance of Duncan Gordon (her brother-in-law) a graphic designer to help her develop the artistic logo. She researched and read several books about design and typography. She wanted the design to have a bold, graphic, and impactful look that would instantly capture attention. She refers in her evidence to the "I ♥ NY" logo and how it inspired her to develop a design that was simple yet distinctive, giving her bag its own unique identity.

She has been unable to locate any contemporaneous documents that support this process of design. She had produced a document consisting of 18 different versions/designs for the Logo which the meta data dates from 25 March 2010. The actual Logo is not one of the 18 designs in the 2010 document. The closest design still has a dot on the i in Shopping which does not feature in the final Logo.She explains that she does not have her old computers from 2008/2009 from which to extract this information.

She explains that she had a variety of different designs prepared and then decided to use the particular design for which the Trade Mark was subsequently obtained and put the artistic Logo design onto a tote bag.

NC-S explained the design process:

“16.

As briefly mentioned in paragraph 13 above, I worked closely with my brother-in-law, Duncan Gordon, who was a graphic designer and had a good understanding of typography and fonts. I shared my vision for the Notting Hill Shopping Bag and how I wanted the words "the Notting Hill Shopping Bag" to be the focal point. The inclusion of the word "the" was intentional. I did not want to portray the brand as the cheap souvenirs which had saturated the market at that time, but a unique and quality tote bag; the Notting Hill Shopping Bag. The inclusion of the word “the”, along with the ‘full stop (.)’ emphasised the bags unique qualities and exclusivity. I wanted to stylise the wording of “the Notting Hill Shopping Bag” so that the text was justified to the left and was separated onto different rows. I wanted the Notting Hill Shopping Bag to be seen as a fashionable bag, rather than a souvenir.

17.

… I provided Mr Gordon with all the necessary information which I wanted to be included in the Notting Hill Shopping Bag, such as font, boldness, words and Mr Gordon with his abilities as a graphic designer, helped create the designs as a result. While all the designs were strong, one of them stood out immediately—it had the perfect balance of simplicity and modernity while making a bold statement. The clean typography and strong lines embodied the elegance and charm of Notting Hill while remaining versatile and easy to recognize. Ultimately, I chose the final artistic work for the logo of the Notting Hill Shopping Bag because it was simple yet striking, and it captured exactly what I envisioned: a stylish, timeless bag that represented the essence of Notting Hill while being practical and impactful.”

The evidence in relation to when and how the Logo was created is very limited. However, it seems clear that it was being sold by no later than 2009/2010 even if the only design document is dated March 2010.

On 21 November 2023 shortly before issuing this claim NC-S entered into a legal assignment with Mr Gordon by which he assigned all his intellectual property rights in the Logo to NC-S. Although Mr Gordon could have been asked to provide a witness statement which explained the design process and his involvement, I keep in mind the need for proportionality in an IPEC case. I am satisfied that any artistic copyright in the Logo would be owned by NC-S and would not have been assigned to the Restored Company.