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

Following the restoration of the Restored Company on 22 October 2023 the Restored Company purported to assign the Renewed Trade Mark to NC-S, and she then purported to assign the Renewed Trade Mark on to NHBCL by the 2023 Assignments (separately “the NC-S Assignment” and “the NHBCL Assignment”).

The 2023 Assignments were of no effect in respect of the Trade Mark because the Renewed Trade Mark was a nullity. Whether they were capable of assigning any other intellectual property rights depends on the nature of those rights and whether they had revested in the Restored Company on restoration and the interpretation of the 2023 Assignments.

The 2023 Assignments, appear to have a broader scope than the limited purpose for which the Restored Company was restored.

The 2023 Assignments are in similar terms seeking to pass certain rights from the Restored Company via NC-S to NHBCL. The 2023 Assignments record that the purpose of the restoration was to transfer the Registration (which definition was limited to the Trade Mark) and to assign the rights in connection with the Registration including goodwill. However, the operative terms purported to assign much broader rights described as the Assigned Rights defined as “any and all goodwill and Intellectual Property Rights in and to the Registration”. Intellectual Property Rights were extremely broadly defined. It appeared to be a boiler plate definition including rights that plainly had nothing to do with the Trade Mark or indeed the Restored Company. It did however include registered and unregistered rights and the right to sue for passing off and copyright.

Dr Muir Wood sought to argue that the 2023 Assignments exceeded the ambit of the restoration order and that the 2023 Assignments were ultra vires. I do not agree with his analysis. The restoration order itself was not limited; it simply restored the Restored Company to the register. As set out above the Restored Company was then deemed to have been in continuous existence from 10 April 2018 to the date of restoration as if it had never been dissolved subject to the effect of for example the expiry of the Trade Mark in the intervening period.

If the NC-S Assignment was an assignment that the Restored Company could have entered into as a consequence of its own constitution/articles it was not ultra vires for it to do so once restored. Indeed, had NC-S sought further directions and/or a variation of the restoration order to expand the scope of the Application to encompass any registered or unregistered intellectual property rights and ancillary rights it is quite likely that the BVD would have simply agreed subject to modifying the undertakings.

But it is right to recognise that the restoration order was intended to be circumscribed by the undertakings which NC-S had given to the court as a member and director of the Restored Company in return for the BVD’s consent to the restoration order.

In the absence of further directions or a variation to the restoration order under s.1032 CA 2006 whilst the NC-S Assignment was not ultra vires it was a breach of NC-S’s undertakings to the court. Neither counsel addressed me on the consequences of those breaches and whether they could in some way limit the validity of the NC-S Assignment, but it does not seem to me that it would be directly affected by her breach of undertaking – the question is rather – what in fact was capable of being assigned.

It was clear from her evidence that NC-S had not appreciated the significance of the undertakings. For example, she accepted in cross examination that on the face of it the undertakings did not include goodwill. Further whilst she had undertaken to the court to apply for the voluntary strike off of the Restored Company within three months of the 2023 Assignments, she had only recently applied to do so 18-months later.

The Defendants’ counterclaim sought a declaration that the Trade Mark had been wrongfully renewed by the person or persons who purported to renew it on 22 March 2023. The DCC dated 9 January 2024 pleaded the expiry of the Trade Mark, that the BVD would not have renewed the Trade Mark and pleaded that someone who was not entitled to renew it must have improperly renewed it. The Defendants put in issue the propriety or validity of the renewal and consequently the Trade Mark and did so before the period for restoring the Trade Mark had expired.

Once restored the Restored Company may have been able to take steps to apply to renew the Trade Mark during the six-month grace period permitted in accordance with section 43(3) of the TMA 1994 and rule 36(2) of the Trade Mark Rules 2008 (the “2008 Rules”), before 2 November 2023. It may have been able to apply to restore the Trade Mark under section 43(5) of the TMA 1994 and rule 37(1) of the 2008 Rules, before 2 May 2024. Whilst Dr Muir Wood submits that it would have been hard for NC-S to satisfy the conditions of such an application, no such application was made.

Any such application would first have required an application for directions under s.1032 CA 2006 whether for retrospective or prospective permission and varied undertakings given the limited scope of the Application. Despite being put on notice by the Defendants in the DCC, NHBCL did not do so. Instead, it relied on the Renewed Trade Mark and the 2023 Assignments.

The question of the beneficial interest falls away for the purposes of the Renewed Trade Mark because even if such a beneficial interest had existed there was no application to vest the legal interest prior to the expiry of the Trade Mark.