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

This is a claim under s.10(2) TMA 1994, but it is made by NHBCL. For the approach to a claim under s. 10(2) TMA 1994 I was referred to Match Group LLC v. Muzmatch Ltd [2023] EWCA Civ 454; [2023] Bus. L.R. 1097, at §§26-29 and Sazerac Brands, LLC v. Liverpool Gin Distillery Ltd [2021] EWCA Civ 1207; [2021] E.C.C. 25, at §§10-14.

An infringement action has to be brought in relation to a registered trade mark. When this claim was issued there was no subsisting registered trade mark for the reasons set out above.

Further an infringement action has to be brought by a proprietor or with its consent. NHBCL are not and never were the proprietor of the Trade Mark. Although it may have used the Trade Mark with the Restored Company’s consent between June 2017 and April 2018 (or indeed prior to that as a wholesaler) it did not have any consent from the proprietor to use it from 10 April 2018. There cannot have been any use by the proprietor or with its consent in the course of trade after that date.

The date for assessing infringement is the date when the alleged infringing acts occurred. For the reasons set out above I have found that the earliest dates on which the Defendants were selling infringing goods based on the evidence available was from around November 2022.

The Trade Mark passed bona vacantia to the Crown on 10 April 2018 and remained vested in the Crown when the infringing acts are said to have commenced in about November 2022. There can have been no use of the Trade Mark in the course of trade with the consent of the proprietor between 10 April 2018, and the time when the infringing acts were said to have commenced in November 2022 and the expiry of the Trade Mark.

The Trade Mark expired on 2 May 2023 and was not validly renewed on 22 March 2023. From 3 May 2023 there was no subsisting Trade Mark to infringe. The Trade Mark was not subsequently renewed or restored following restoration of the Restored Company, and it is too late to do so now.