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

NHBCL pleads that in so far as Organic Hill generated goodwill between 2013 and 2018 that was assigned to NHBCL by the Organic Hill assignment. The Organic Hill assignment was said to be confirmatory of a transfer or assignment of Organic Hill’s goodwill to NHBCL.

However, CA confirmed that Organic Hill had been continuously trading in the Claimants’ Bag using the Logo and the Brand Name (and the Trade Mark) since 2013 and continued to do so. As a matter of fact, therefore it did not appear that there had been any transfer or assignment of any goodwill by Organic Hill. In light of the evidence, the Claimants accepted in closing that there had not been a transfer of the goodwill from Organic Hill to NHBCL.

There was a further difficulty in that the Organic Hill assignment would have been an assignment in gross. There was no assignment of any business but an assignment of the goodwill and intellectual property rights in and to the “Sign” where the sign was the Logo and the Brand Name. Consequently, it would have been ineffective to assign any goodwill from Organic Hill to NHBCL in any event.

Dr Muir Wood argued that the sales to Organic Hill could not be treated as evidence of any onward sale either since Organic Hill continues to sell the Claimants’ Bag using the Logo and the Brand Name itself.

Organic Hill had clearly generated its own goodwill by 2018 given the attempt to assign it and will have continued to do so given they have been continuously trading. They provide a shopfront for the sale of the Claimants’ Bag. NHBCL relied on photos of Organic Hill’s shop front (the shop itself is now called Cotton Hill) to support their claim to goodwill and generally.

I agree that NHBCL cannot rely on any goodwill generated by its onward sales to Organic Hill to support the passing off claim in the circumstances of this case but do not accept a more general proposition that they would not be able to seek to rely on goodwill generated by sales to wholesalers or stockists. In relation to other stockists, it would depend on the facts.