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

The Claimants plead that NHBCL is the current trading vehicle for the Logo and the Brand Name having built up substantial and valuable goodwill in the business in the UK. They plead that the Logo and the Brand Name have become associated with the Claimants with the relevant public – they had a reputation before the date on which the Defendants commenced trading the Defendants’ Bags. They say the Logo and Brand Name are unique.

NHBCL submit that any goodwill generated in the Logo and the Brand Name prior to 13 June 2017 had been passed to NHBCL. This would have been a combination of the goodwill generated by NC-S herself and/or by the Restored Company.

Goodwill can pass more informally between businesses where it relates to an unregistered right rather than say a trade mark, but NHBCL still has to establish that the ownership of the goodwill had passed to it.

It was common ground that goodwill could not be assigned or otherwise dealt with in gross and must remain in the same ownership as the business to which it relates. It had no independent existence. It could therefore only be assigned with the business to which it attached and not on its own.

The Claimants sought to argue that goodwill could be assigned with and attach to for example the Trade Mark/Renewed Trade Mark rather than the business as a whole and relied on the 2023 Assignments: see Wadlow on the Law of Passing Off 6^th Edition at 3-403:

“An assignment of goodwill does not have to be in writing or any particular form and need not mention goodwill by name. A transaction intended to assign a business as a whole necessarily passes the goodwill to the assignee.A transaction which purports to deal with specific brands or marks may be interpreted as dealing with the goodwill of the business in which they are used.”

However, the passage in Wadlow is not authority for any general proposition that goodwill can be uncoupled from the business. Instead, it simply identifies that as a matter of interpretation it may be that a transaction does in fact deal with the goodwill of a business even though it appears to only deal with a specific mark.

The goodwill must remain in the same ownership as the business to which it related and something less than that is not sufficient (The Commissioners of Inland RevenuevMuller & Co’s Margarine Ltd [1901] A.C. 217 (UKHL), at p224 and Barnsley Brewery Co Ltd v RBNB [1997] FSR 462 per Robert Walker J at p.469).