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

This judgment concerns the intellectual property rights in a Brand Name and Logo used on tote bags.

The claim was issued on 24 November 2023, and the Particulars of Claim (“POC”) are dated 27 November 2023. The Defendants’ defence and counterclaim (“DCC”) is dated 9 January 2024 and the Reply and Defence to Counterclaim (“RDCC”) is dated 6 February 2024.

The list of fourteen issues to be determined at trial was approved at the CMC on 30 July 2024. Those issues are set out in an annex to this judgment with a summary of the decision I have reached on each issue. For the reasons set out in this judgment the overall effect of those decisions is that the Claimants have not succeeded on the claim.

The Second Claimant, The Notting Hill Bag Company Limited (“NHBCL”) claims infringement of a United Kingdom (“UK”) trade mark pursuant to the Trade Marks Act 1994 (the “TMA 1994”). It also advances a claim in passing off. The First Claimant (“NC-S”) claims copyright infringement pursuant to the Copyright, Designs and Patents Act 1988 (the “CDPA 1988”).

NC-S claims to own the artistic copyright subsisting in a logo sign as set out below (“the Logo”).

Having created the Logo in about 2008/2009, NC-S subsequently sold tote bags featuring it, wholesale to traders on the Portobello Road in Notting Hill.

On 6 April 2010 NC-S incorporated The Notting Hill Shopping Bag Company Limited (company number 07212588), of which she was the director and shareholder, as a trading vehicle for her business selling tote bags featuring the Logo.

At NC-S’s request it was voluntarily struck off and dissolved on 10 April 2018.

On 7 March 2023, she issued an application to restore it to the register for limited purposes (“the Application”) (see below). The company was restored to the register by an order dated 7 September 2023 (sealed on 13 September 2023) (“the Restored Company”) (“the Restoration Order”). The Restoration Order took effect when it was registered at Companies House on 12 October 2023.

The Restored Company was the registered proprietor of a trade mark registered in the United Kingdom under number UK000030004468 for a figurative device mark, filed on 2 May 2013 and added to the register on 11 October 2013 (“the Trade Mark”) in respect of the Logo and the brand name THE NOTTING HILL SHOPPING BAG (“the Brand Name”) (together “the signs”).

The Trade Mark was registered for goods in class 18: Bags; shopping bags, carrier bags.

NHBCL was incorporated on 13 June 2017, Mr Canbolat An is the sole director of NHBCL (“CA”). CA is also the director and owner of Organic Hill Limited which was incorporated in May 2013 (“Organic Hill”).

The Claimants say that the Restored Company and following its incorporation NHBCL manufactured, advertised, offered for sale and/or sold sustainable and eco-friendly bags manufactured from cotton or natural jute known as the Notting Hill Shopping Bag under the signs (“the Claimants’ Bag”). The Claimants’ Bag originally featured a strap line “Reducing plastic bag use. Supporting local good causes” followed by the Restored Company’s name and website address but this was not part of the Logo.

In the events set out below the Trade Mark was renewed by CA on 22 March 2023 and following two assignments on 22 October 2023 (“the 2023 Assignments”) assigned to NHBCL. NHBCL is recorded at the UKIPO as the current registered proprietor of the renewed Trade Mark (“the Renewed Trade Mark”). NHBCL relies on the Renewed Trade Mark for its standing in relation to the Trade Mark claims.

The Claimants say that there was and is goodwill in the business which used/uses the Logo and the Brand Name and/or the Renewed Trade Mark in respect of the Claimants’ Bag which has subsisted since 2010 and was transferred by NC-S to NHBCL via the Restored Company.

The Third Defendant, The Notting Hill Shopper Bag. Ltd (“NHSBL”) was incorporated by the Fourth Defendant (“ET”) on 30 November 2022. ET is the sole director and shareholder. The similarity between the name of the Third Defendant and the Restored Company and NHBCL will be apparent.

The First Defendant, The Notting Hill Shopping Bag Company Limited (“NHSBCL”) was incorporated by the Second Defendant (“NT”) on 9 January 2023. NT is the sole director and shareholder. NHSBCL has the same name the Restored Company had prior to its dissolution. As a consequence of its use of the name NHSBCL, the Restored Company was unable to be restored to its original name and was restored as 07212588 Limited. Again, the clear and obvious similarity of names is apparent.

NT and ET are brothers. NHSBCL, NHSBL, NT and ET together are referred to as the Defendants.

Both of NHSBCL and NHSBL (and before their incorporation, NT and ET personally) sell products, including bags in Notting Hill for which they sought to register trade marks in January 2023. NT and ET say they came up with their ideas for the designs for the Defendants’ Bags in about 2016/2017 and were selling them on the Portobello Road from some time in about 2017. This is disputed.

NC-S says that the Claimants first became aware that the Defendants were selling the Defendants’ Bags from premises on the Portobello Road in competition with the Claimants’ Bag in early January 2023. In particular they became aware that the Defendants were selling the Notting Hill Shopper Bag. This led to the discovery that the Trade Mark had not been transferred out of the Restored Company before its dissolution. This resulted in a considerable amount of activity by the Claimants and the Defendants in January 2023.

Having incorporated NHSBCL on 9 January 2023, on 11 January 2023 NHSBCL filed a UK trade mark application number 3866831 to register a trade mark in class 16: gift bags and also class 18: (Reusable Shopping Bags; Bags; Carry On Bags; Garment Bags; Casual Bags) at the UKIPO for the following sign:

On 17 January 2023 NHSBL filed a UK trade mark application number 3868678 in class 16 (Gift bags; Carrier bags) and class 18 (Bags; Carrying bags; Bags for travel; Shoulder bags; Towelling bags; Knitted bags; Hand bags; Travelling bags; Traveling bags; Beach bags; Knitting bags). At the UKIPO for the following:

Both of the mark applications are subject to Notices of Opposition filed by NC-S in the UKIPO on 5 June 2023.

NC-S filed her own trade mark application no 3866628 on 11 January 2023 for the mark THE NOTTING HILL SHOPPING BAG. NHSBL filed a Notice of Opposition in the UKIPO on 27 April 2023.

All three trade mark applications have been stayed pending this determination.

The Trade Mark was renewed on the 22 March 2023; it had been due to expire on 2 May 2023. On 16 May 2023 NHSBL applied to the UKIPO to revoke the Renewed Trade Mark for non-use. The revocation application has also been stayed pending this determination.

By the time this claim was issued therefore ET and NT had incorporated two companies with identical or near identical names to the Restored Company and acquired associated domain names. They had applied to register trade marks which included an application to register a trade mark for the Notting Hill Shopping Bag rather than the Defendants’ sign the Notting Hill Shopper Bag about which complaint is made in this claim. The Claimants rely on this course of conduct generally and particularly in relation to the passing off claim.

NHBCL relies on the registration of the Trade Mark/Renewed Trade Mark in respect of the Logo only for its trade mark infringement claim. It claims to own goodwill in the UK under the Brand Name and the Logo in respect of the Claimants’ Bag.

NHBCL complains that the Defendants have infringed the Trade Mark/Renewed Trade Mark under section 10(2) TMA 1994 through use of the sign Notting Hill Shopper Bag (“the Notting Hill Word Sign”) and the sign THE CAMDEN TOWN SHOPPING BAG (“the Camden Word Sign”) (“the Defendants’ Signs”) and the following device on its bags (“the Defendants’ Bags”):

Further NHBCL complains that, by using the Defendants’ Signs, the Defendants’ have passed themselves off as NHBCL.

The relevant comparisons between the Claimants’ signs and the Defendants’ signs are set out below:

NC-S complains that the Defendants have infringed her artistic copyright subsisting in the Logo and that such acts were flagrant within the meaning of section 97(2) CDPA 1988.

The Defendants raise multiple defences and counterclaims. In respect of the Trade Mark Infringement claim they deny that the Trade Mark was validly renewed prior to 2 May 2023. If they are right, the Trade Mark claims would fall away both because there would be no subsisting trade mark and because NHBCL would not have any standing to make the Trade Mark claims.

Even if they are wrong about that they seek to (i) revoke the Trade Mark for non-use; (ii) invalidate the Trade Mark for being devoid of distinctive character and/or entirely descriptive; and (iii) deny that any of their acts amount to trade mark infringement.

In respect of the passing off claim the Defendants deny that NHBCL owns any goodwill in the UK under the Brand Name or the Logo and deny that the Defendants’ acts amount to passing off.

They accept that there is a similarity between the signs but argue that the differences are sufficient to enable the relevant public or average consumer to distinguish between them particularly in relation to the Camden Town Word Sign.

In this claim the goodwill arguments in relation to the passing off claim overlap to some extent with the arguments about the Trade Mark renewal as they are bound up with the consequences of the dissolution of the Restored Company.

In respect of NC-S’s artistic copyright claim the Defendants deny that artistic copyright subsists in the Logo; deny copying it; and accordingly deny that any of their acts amount to copyright infringement.

The Defendants also deny that they are joint tortfeasors, whether as the Defendants as a whole or each of NT and ET with their respective companies.