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

BVD/the Crown will not generally incur costs in relation to assets that have passed to it bona vacantia, instead it will generally disclaim. The BVD confirmed its usual position in relation to Trade Marks on 23 December 2024:

“The Treasury Solicitor does not renew any Trademarks (sic), nor do we authorise anyone else to do so on our behalf.”

The Crown had not been asked to renew the Trade Mark. It had not been asked to, nor had it authorised anyone else to renew it on its behalf. It had not sold, transferred or vested the Trade Mark in anyone else by the time it expired on 2 May 2023.

There was therefore no Trade Mark to be revested or restored to the Restored Company when the restoration order was made. The Application had not sought any additional directions under s.1032 CA 2006 that may have permitted the Restored Company to take steps to renew or restore the Trade Mark and or extend any time period for doing so or to ratify some act taken or to be taken on behalf of the Restored Company whilst it was dissolved. Whether such an application would have been successful would have depended on the specific circumstances, but no such application was made.

Without authority or permission from the Crown, CA had purported to renew the Trade Mark on 22 March 2023. Whether he sought to do so for NC-S, NHBCL or the Restored Company does not matter because he had no authority or legal basis to do so, and any such renewal was void/a nullity. Only the Crown/the BVD would have been in a position to renew the Trade Mark or give authority for someone else to do so.

CA and NC-S gave differing accounts as to the basis on which CA made the application to renew. The RDCC pleaded that (i) CA renewed the Trade Mark for and on behalf of NHBCL alternatively for and on behalf of NHBCL acting for the Restored Company. In CA1 he explained he was renewing on behalf of NC-S and the Restored Company. In cross examination he suggested that the reference to “company” at [33] in CA1 was in fact to NHBCL and that he was permitted to renew the Trade Mark in the name of NHBCL. NC-S accepted in cross examination that CA renewed the Trade Mark on behalf of the Restored Company and that she had instructed him to do so.

CA explained that he completed the form TM11 online. He did not retain/print a copy of the TM11. The TM11 would have required him to specify the capacity in which he made the application providing three options ‘Recorded owner’, ‘Recorded representative for the owner’ or ‘Other (Please specify)’. When cross examined, he could not remember which of the options he had chosen when he made the application to renew.

The Restored Company did not exist even if it remained the registered or recorded owner of the Trade Mark. The Crown had not given CA permission or authority to renew the Trade Mark; his only option would have been “Other” but “Other” has a limited scope. Pursuant to s. 43 TMA 1994 a trade mark “may be renewed at the request of the proprietor…”. “Other” is not intended to allow a third party who asserts some interest by way of a licence or beneficial ownership/assignment to renew a Trade Mark registered in the name of another party. That way lie monsters. CA was not making the application at the request of or with the authority of the owner of the Trade Mark.

In closing the Claimants sought to argue that NHBCL as beneficial owner of the Trade Mark always had authority to use it and therefore authority to renew it. They submitted that the legal and beneficial interests in the Renewed Trade Mark would then have merged when the 2023 Assignments were entered into.

Neither a licence nor a beneficial interest would have given CA or NHBCL standing to override the BVD. If either interest were asserted the proper course would have been to apply for a vesting order and then apply to renew the Trade Mark once legal title had vested. However, NHBCL did not have authority to renew the Trade Mark even if it did have a beneficial interest for the reasons set out above. The 2023 Assignments did not merge any beneficial and legal title in the Trade Mark.

The Renewed Trade Mark is a nullity.