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

Each of NC-S, CA, NT and ET provided witness statements and gave oral evidence at trial. NC-S1 and CA1 were dated 16 December 2024. NT1 and ET1 were dated 19 December 2024 and ET2 was dated 6 February 2025. I have considered that evidence carefully. In the end I do not need to refer to much of it in this judgment because of the effect of the dissolution of the Restored Company.

However, it is still necessary for me to have regard to the entirety of the witness evidence as part of my assessment of the witnesses’ credibility and the reliability of their evidence even if I do not set out all of the evidence in any detail. In doing so I keep in mind the guidance about the fallibility and unreliability of memory and how it degrades over time and the natural, even if unconscious, process of reconstruction.

Limited documents were disclosed to support or corroborate the evidence of any of the witnesses. The lack of documentation places a heavy reliance on the witnesses’ memories of events that took place some time ago.

I consider each of the witnesses below and in doing so touch on some of the factual evidence to assist with explaining my assessment of their evidence. I consider other aspects of their evidence in the main body of the judgment, as necessary. Because of the position on dissolution some of the evidence touched on below is not then considered further in the judgment.

This claim relates to trading activity along Portobello Road in Notting Hill. Portobello Road is well known for its market and market stalls. It is not a particularly long road and the area covered by shops and market stalls does not extend to its full length. Portobello Road is a thriving market with a stall holders association. Mark Barr as head of the Stallholders Association (“the Association”) explains that they represent the individual stall holders who operate within Portobello Market. It appeared to be accepted by the witnesses that there was an active community for the stall holders and others on Portobello Road in which the Association takes an active role.

Even prior to the film Notting Hill, Portobello Road was known for its antique market and was a draw for tourists. Mr Gruber’s antique shop in Paddington Bear was said to be on Portobello Road. As NT explains, the first of the recent Paddington Bear films was released in 2014. This no doubt only increased the number of tourists and visitors to the area.

Each of CA, NT and ET have shops or stalls on and work on the Portobello Road. The proximity of CA, NT and ET and their knowledge of each other undermined the Defendants’ evidence.

CA explained that he had been running his shops/businesses on Portobello Road since about 2000. Over the relevant period CA had shops on the Portobello Road at 15A/15B Portobello Road, at the Notting Hill end of the Portobello Road, and he continues to trade his current businesses from those shops. He had in the past had units at both 3 and 13 Portobello Road.

ET arrived in the UK in about December 2012 and started working on a stall at Portobello Road. He says he started trading from his own stall in 2014. His stalls were in front of 93 and 111 Portobello Road, both towards Westbourne Grove in the middle of Portobello Road, no more than a few hundred metres from CA’s shops.

One of NC-S/the Restored Company’s and later CA’s/NHBCL’s wholesalers was Delia Hunt at 89 Portobello Road who sold the Claimants’ Bag from her shop from about 2009/2010 until her retirement in about 2022.

ET explains that in about 2017 he was able to lease the shop premises at 93 Portobello Road. He still runs his business from those premises. He was therefore trading two doors down from Ms Hunt over the relevant period.

He leased 89 Portobello Road in June 2022 following Ms Hunt’s retirement but gave up that lease in June 2024. He retained his stall at 111 Portobello Road.

NT had arrived in the UK in 2014. In about 2017 he had rented a stall opposite Chelsea Gallery at about the middle of Portobello Road. He says that his trading location was changeable as the market management would move the traders to different locations on the same road. In June 2022 ET gave him his stall at 111 Portobello Road and NT now runs his business from that stall.

There is a dispute between CA, ET and NT about how well they knew each other, when they knew each other and the extent of any business dealings between them. However, they all ultimately accepted that they knew each other from at least 2017. The question of when the Defendants started to sell the Claimants’ Bag and the Defendants’ Bags and the extent to which they each knew about the other’s activities remained in dispute.

On this issue which was primarily focussed on whether the Defendants were selling the Defendants’ Bags on Portobello Road from about 2017 I do not accept the Defendants’ evidence for the reasons set out below. I prefer the Claimants’ evidence which had the benefit of support from the disclosed documents. I am satisfied that on the evidence available the Defendants commenced the sale of the Defendants’ Bags using the Defendants’ signs in about November 2022.

The absence of documents which included a lack of meta data from the Defendants and the deletion of WhatsApp messages by CA contribute to the overall unsatisfactory nature of the evidence available in this claim. Those shortcomings are not one-sided.

NC-S gave evidence covering a period from about 2008. The supporting documentation was sparse. The creation of the Logo was said to have taken place in about 2008/2009 as part of a local community project which might in part explain the sparseness of the documents about the design process. She attributed the lack of documents about the original design process to the passing of time and that she no longer had her old computers on which documents about the creation of the Logo may have been kept.

NC-S was challenged about when she actually created/came up with the idea for the Logo. Her witness evidence referred to both 2008 and 2009 and the only document supporting the design process was the one dated March 2010. The Defendants rely on this lack of clarity but more particularly on the lack of any creativity or freedom of choice in the design process. I consider her evidence on creativity in the copyright section below. Whilst not entirely satisfactory having had the benefit of seeing NC-S cross-examined I had no reason to doubt her explanation.

In 2009 NC-S explains that she started to sell the tote bags with the Logo wholesale to businesses on Portobello Road with the support of the Association. Mark Barr explains that she approached him with her idea and designs in early 2009. Her project was approved and in the end 18 stallholders agreed to stock the bags with the Logo including him and his wife.

Although the only design document that NC-S has been able to produce is dated March 2010 I accept her evidence that she created the Logo and was promoting the tote bag with the Logo by sometime in 2009. In doing so I take into account that this is an IPEC claim, the background to the design as explained by NC-S including whether her explanation for the lack of better evidence is credible and the time that has passed since the design process was undertaken.

The tote bags with the Logo in cotton and jute captured the zeitgeist and drew interest from the world of celebrity. CA was challenged about his evidence about whether the Logo was always on the tote bags.

However, certainly in 2010 there is evidence that the tote bags generally featured the Logo on one side and in some cases another design on the other side of the bag. For example, in October 2010, a cupcake-themed bag which featured a cupcake design on one side and the Logo on the other designed by Natalie Imbruglia was being advertised and sold. This collaboration featured in the local press but also in the Daily Mail and OK! Magazine. In 2011 the Sunday Mail did a short article about NC-S and the Claimants’ Bag.

In about August 2012 the Claimants’ bag was presented to the now Princess of Wales on a visit to Portobello Road although the tote bags in the photo of that visit do not show the Logo side of the tote bags. The Defendants accept that NC-S/the Restored Company made some limited use of the Trade Mark/Logo for shopping bags up to around 2012 and that they may have generated goodwill associated with it.

NC-S was a nervous witness. I am satisfied that she was doing her best to assist the court and that her answers were honest and credible even though they did not always accord with the way in which the claim had been advanced. That was to her credit. For example, she agreed that there had been no outright sale of her business to CA. She accepted that she could not point to a document that evidenced a single sale to the member of the public only to the wholesalers and mainly to Organic Hill. She accepted that the social media followers were small in number and that data about where they were or when they started to follow was not available.

NC-S explained that she built partnerships of mutual respect and collaboration with traders on Portobello Road including CA. She explains that her “partners” including CA would provide feedback on the designs and colours of the Claimants’ Bag which then influenced the development of the Claimants’ Bag and its colour scheme. She says she ended up with 18 wholesalers by 2017 including Mr Barr and CA.

In 2013 NC-S took action against a shop owner who she considered was copying the Logo and taking advantage of the reputation that the Claimants’ Bag had acquired. Other third parties produced bags such as the Notting Hill Book Shop which she did not consider copied the Claimants’ Bag or Logo which she considered remained distinctive and stood out in the market.Her approach to seeking to protect what she considered to be her distinctive design including the subsequent registration of the Trade Mark in 2013 were entirely consistent with her taking action as soon as she found out about the Defendants’ Bags in January 2023 rather than as the Defendants’ suggested having allowed them to compete with the Claimants’ Bag for 6 years. I did not accept the Defendants’ evidence on this issue in any event for the reasons set out below.

Her evidence and that of CA about the arrangements with CA in 2017 caused the Claimants to concede that there had been no joint venture but rather that the Restored Company and NHBCL were operating in parallel and that there was a gradual transition of aspects of the Restored Company’s business up to the dissolution of the Restored Company.

NC-S was from time to time more combative and argumentative than was entirely necessary but that appeared to stem from both her nervousness and a lack of understanding about the process of cross examination itself. It also appeared to stem from frustration and a lack of understanding about the legal effect of the dissolution and restoration of the Restored Company. It seemed from her answers that she had not been deeply involved with the claim or the events since January 2023 and had relied on both her legal team and CA.

Other than NC-S the witnesses were not giving evidence in their first language. However, each of the three other witnesses had signed witness statements in English and all the documents including those sent to and by those witnesses were in English. On that basis the court and the other parties were entitled to assume that the witnesses were sufficiently fluent to give oral evidence including under cross examination in English (see CPR PD32 paragraphs 18.1 and 18.2 and as further guidance PD57AC paragraph 3). No party sought permission to rely on an interpreter.

CA’s evidence covered a period from about 2009 although NHBCL was not incorporated until 2017. He too had produced very little documentary evidence. He had deleted some WhatsApp messages with the Defendants which took place in 2022, in about February 2022. That was unfortunate but was prior to the dispute that has since arisen between the parties.

CA has had a number of companies and a number of different shop premises on the Portobello Road. He is clearly an experienced businessman. Despite this he had not produced any financial information to prove the figures provided for NHBCL’s annual turnover attributable to the Claimants’ Bag or the annual advertising and marketing budget as set out in the POC despite having been put to proof.

This inevitably left him open to challenge and his responses were not always entirely consistent with his witness statement nor were they always entirely straightforward particularly when he appreciated that the course the questioning was taking was one that did not necessarily assist him. The Defendants’ counsel described him as evasive, but I consider that to be an unfair characterisation of CA. Whilst he was certainly not straightforward on some issues, on other issues he conceded or accepted the position put to him by the Defendants or simply disagreed with the Defendants’ characterisation of events. For example, he also conceded that there was no evidence of a direct sale to the public. He accepted that the domain name used by the Restored Company had remained registered in NC-S’s name until it was transferred to him in October 2023. He accepted that there had been a gradual transition/piecemeal transfer of control of the business in 2017/2018. His evidence in relation to the Renewed Trade Mark was less straightforward (see below). I treat his evidence with a measure of caution.

ET and NT were not easy witnesses. Both were hampered by a lack of documentary evidence. Even making a generous allowance for the fact they were not giving evidence in their first language I did not find either of them be straightforward. Overall, both ET and NT were unsatisfactory, evasive and inconsistent and on many occasions their evidence was simply not credible or believable and was unsupported by such documents as there were.

From time to time each of NT and ET appeared to struggle to understand and/or respond to questions. Even when the questions were reframed two or three times by Mr Marshall as increasingly simple questions NT and ET did not always engage fully with the questions. I was not satisfied that this was entirely due to a language issue. It was at odds with the nature and content of their witness statements which appeared to demonstrate a good grasp of English. It was also at odds with the way in which, for example, ET sought to differentiate “shopping” from “shopper”. Their evidence was vague and intangible on key issues for their own DCC. On other questions their answers were not credible which then undermined their evidence in other areas.

Neither ET nor NT appeared to have documents that related to their respective businesses before about 2022. Both however, say that they were trading the Defendants’ Bags from about August 2017.

The only documentary evidence of the existence of the Defendants’ Bags was an image said to be of a bag produced by ET from 2018 (which included meta data) which was not initially relied on in these proceedings but had been produced in the UKIPO.

Other than the one image for the period from 2017 until about May 2022 the Defendants have not produced any documents to support their position. The Claimants argue this is because the Defendants were not in fact selling the Defendants’ Bags until late 2022.

ET was challenged about the 2018 image. His evidence about it was vague. He denied having tampered with it but said it had been forwarded to him by someone else – it was not his photo. He did not say who had forwarded it to him or when. He suggested that the date on it in the UKIPO proceedings was the date he received it. He could not explain why in these proceedings he had used a cropped version without meta data. The image is inconsistent with all the other evidence about when the Defendants’ signs were first in use. ET’s apparent inability to grasp the significance of that or what native format documents or meta data were and/or why it might have been important to produce it despite his own legal team having sought such data from the Claimants did not assist him.

He explained that he did not have any documents prior to 27 October 2021 when he obtained leave to remain and that prior to the incorporation of NHSBL in December 2022 he did not need to keep records of his business because he was a sole trader. Remarkably, ET purported to be able to give detailed evidence about financial aspects of his business for a five-year period with no records at all and yet was unable to recall significant events or details about the development of his designs for the Defendants’ signs.

In his evidence for the UKIPO filed on 27 October 2024 he set out his total annual turnover/trading figures for a 5-year period from 2017 to 2022. He then separately provided precise percentages of the overall sales said to relate to Defendants’ Bags for the same period. The figures appeared to be precise and certainly would have given the impression that they were based on some financial information in relation to the sale of his bags. Indeed, his witness statement in the UKIPO explained that the figures were based on a review of his business records. That evidence did not make the cut in these proceedings where not a single document had been produced to support either the trading figures or how he knew or calculated the percentage of the sales that related to his bags.

Given that ET was seeking to prove that he had been selling his bags featuring the Defendants’ signs since 2017 the apparent failure to deploy this evidence in these proceedings either by way of disclosure or in his witness evidence when the timelines overlapped was all the more surprising.

He sought to correct himself to say that in fact the figures were a rough estimation and explained that he kept the figures in his head and that they were not recorded in any documents. That was simply not remotely credible and entirely inconsistent with what he had said in the UKIPO. It also undermined his other evidence including about the image.

NHSBL was not incorporated until November 2022 and consistent with that the domain name nottinghillgift.com used by ET was not registered until 22 December 2022. ET sought to maintain that images of his bags featuring the domain name and/or NHSBL could have been taken or produced prior to the registration of the domain name or incorporation of NHSBL. I do not accept that evidence. I do not accept that ET would have or did produce and sell bags featuring a domain name he did not own or a company he had not incorporated. Even if there had been a short lead in time prior to incorporation which was not his evidence that would not have supported his claim that he had been selling the bags featuring the Defendants’ signs since mid-2017.

The evidence of bags featuring the Defendant’s signs, NHSBL’s name and/or the domain name in late 2022 is entirely consistent with the Defendants’ signs being used on bags for the first time in about late 2022. It is entirely consistent with NC-S’s discovery that the Defendants were selling their bags in January 2023. It is consistent with the documentary evidence that the Defendants had ordered bags from suppliers in May, September and October 2022 with a 30-to-45-day delivery period. It provides no support at all for the Defendants’ pleaded position that they were marketing and selling bags featuring the Defendants’ signs in 2017.

ET provided very vague evidence around the dates in 2016 and 2017 and his process of development and the creation of his designs and his business. On his case this was a period of significant development in his business and the development of the Defendants’ Bags and signs and core to his defence of this claim.

His explanation for the use of Shopper in the Notting Hill Shopper Bag Word sign underscored the unsatisfactory nature of his evidence. The Claimants’ case was that this change was a deliberate attempt to try to differentiate it from the Claimants’ sign. ET’s evidence was that he had used Shopper rather than Shopping because he was designing a bag for people shopping in the area and not to differentiate it from the Claimants’ Bag which he claimed he had never seen. This nuance or attempted differentiation was not credible other than as a means of differentiating the Defendants’ Bags from the Claimants’ Bag.

In order to sustain his position, he explained that whilst he knew that NC-S was delivering the Claimants’ Bag in 2017/2018 that was after he had designed his bag. This unravelled completely when he also said that CA had approached him to sell the Claimants’ Bag in January/February 2017. On his case he knew about/had seen the Claimants’ Bag by early 2017 and before he started to sell the Defendants Bags which on his case was mid-2017. It was completely at odds with his evidence that he had not seen it.

ET’s position was yet further undermined when he explained that he knew about “rights”. He explained the position in relation to Paddington Bear and possible third-party rights. At the same time, he does not appear to have taken any notice of the TM symbol on the Claimants’ Bag. But his knowledge of “rights” puts into perspective the decision to use Shopper rather than Shopping and belies the naivety he appeared to demonstrate when giving his evidence.

It is notable that ET’s opposition to NC-S’s 2023 trade mark application relies on a representation of a trade mark “Notting Hill Shopping Bag” as well as Notting Hill Shopper Bag”. His evidence in the UKIPO is that he sold bags under both names though that is not the evidence advanced in these proceedings. In these proceedings he limits himself to the Notting Hill Shopper Bag.

His evidence that he was influenced or inspired by Edward Sinclair’s London Shopping Bag, and other bags he had seen in London souvenir shops on Oxford Street rather than the Claimant’s Bag which was being sold by Ms Hunt two doors away at the time is unbelievable. I do not accept the convoluted evidence that appears to be an after the event reconstruction. And his evidence that he had never seen the Claimants’ Bag when he designed his own bags was undone by his own evidence in any event.

It is notable that in respect of the Camden Town Word Sign there was no attempt to differentiate it by the use of shopper rather than shopping which again puts into perspective the use of shopper in Notting Hill where there was a Trade Mark in place.

Given his explanation of the steps, he took in the period from 2017 and the work with his suppliers one might have expected him to be able to produce some documents from them even if he no longer retained any. His explanation that he had no records of his own trading activities prior to obtaining leave to remain in October 2021 did not appear to me to provide any basis for him being unable to evidence what he said he had been doing between 2017 and 2022. It was of course at odds with his ability to recall the details of his trading figures for the same 5-year period.

When explaining how his bags were produced, he explained that he had asked his supplier to produce stickers for him to put on plain bags from sometime in 2017 which he then applied to bags himself at home. He says he had the bags manufactured by a company in Pakistan from about 2019. Not a single document has been produced from that supplier. Instead, the documentary evidence from his suppliers started in May 2022 when he says he started to source products from China. The earliest invoice appears to be an outlier. The other invoices date from September 2022, October, November 2022 and January 2023 with a 30-to-45-day delivery period consistent with the date of incorporation of NHSBL.

He agreed that he had lived in the Notting Hill area since 2012 and that it was a community where people know one another. He also agreed that people would act quickly if someone was selling a “rip off”. Despite that his evidence was that he and his brother had separately designed manufactured and sold the Defendants’ Bags on Portobello Road since about August 2017 and that, at least, NC-S must have failed to spot their activities for 6-years. He said that he had been selling his bags from outside 93 Portobello Road in 2017/2018 when NC-S was delivering the Claimants’ Bag to 89 Portobello Road. He says that she must have seen the Defendants’ Bags and raised no objection.

But that argument works both ways. He and his brother both say they knew who NC-S was and admit to having seen her. They must have known about the Claimants’ Bag because their evidence is that CA not only knew about the Defendants’ Bags from 2016/2017 but that he also approached them to sell the Claimants’ Bag in about January 2017 and that they sold the Claimants’ Bags from 2017. Whilst CA does not accept that he approached ET and NT to sell the Claimants’ Bag in 2017, the Defendants evidence appears to me to substantially undermine any credibility in the argument that they were manufacturing and selling the Defendants’ Bags in 2017 at a time when they did not know about the Claimants’ Bag. It simply makes no sense for the Defendants to be invited to stock and sell the Claimants’ Bag at the same time the Defendants say they were openly selling the Defendants’ Bags which the Claimants’ say are infringing products. The Defendants were unable to provide any satisfactory explanation for this. I do not believe their evidence on this.

NT’s evidence was if anything more evasive and incredible than ET’s evidence. His explanation/lack of recollection of his design process including how he came to digitise his designs was incredible. Again, the explanation that he had hand drawn his designs in 2017 and started to put them on his bags from 2017 was unsupported by the documentary evidence. He could not explain with any clarity his design process. Given the importance placed on his design process and his designs his inability to explain the process in any credible detail and the complete failure to provide any evidence to support the creation of his designs between 2017 and 2022 was simply not believable.

Although nothing turns on it, NT’s explanation for his role in his brother’s designs was particularly evasive seeking to deny any role in the design process at all whilst then accepting that he had at least assisted his brother by making the original design on his own computer. Again, the absence of any clear or credible recollection of or documents to support the development of the Defendants’ Bags and signs in the period 2017 to 2022 was simply not believable.

Even if like his brother he had not retained any documents himself he explains that he had bought the stickers that he applied to the bags from the traders who supplied him with the plain bags. He says he then ironed them on at home. He says he continued to produce his bags in this way from 2017 to 2019 after which he started to source them in a pre-printed form from a supplier in China. He produced no documents from any of his suppliers to provide any support for his timeline. None of this was so long ago that it would have been unreasonable to expect him to be able to produce something even for an IPEC claim.

The digitisation process of turning his drawings into digitised copies was undertaken by a friend and a niece in about August and September 2022. That timing was entirely consistent with him sourcing supplies in 2022 and setting up his business in late 2022.

NT denied any knowledge or involvement in the Shopper Bag which was his brother’s bag but accepted that he did make it up for him on the computer. He accepted that he had started selling a bag called the Notting Hill Shopping Bag amongst others but denied it was a copy of NC-S’s design which he said he had not seen at the time he designed his bags in 2016/2017. Like his brother he maintained that CA had encouraged them with their designs and made suggestions. He was unable to explain why CA would do this at the same time as he had just incorporated NHBCL and invested in that business.

As with his brother, images of bags with NHSBCL on can only have been produced on or around the date of incorporation of NHSBCL. He accepted that some of the images of the Defendants Bags that he relied on were taken in 2022 or 2023 and not earlier despite having appeared to suggest they were earlier. He explained that he was not seeking to mislead the court by the suggestion that they were earlier but just intending to provide images as examples of his methods. However, but for the work of Briffa and their analysis of the images it would not have been apparent that the images must have been taken in 2022 or 2023, and the court would have been misled.

The first documents supporting the existence of NT’s bags date from about August/September 2022. NHSBCL was incorporated in January 2023 and the domain name registered in early 2023. That timeline is entirely consistent with the Defendants having commenced selling the Defendants’ Bags no earlier than about November 2022. It certainly does not support the Defendants’ evidence that they had been selling the Defendants’ Bags since about August 2017.

As set out another oddity about the Defendants’ evidence was the acceptance that they had been buying the Claimants’ Bag from CA. CA accepted that he knew ET and NT and that he had supplied them with Claimants’ Bag from shortly before Covid so around early 2020 to 2022 rather than 2017 as they contended. There was a dispute about whether they paid cash for the Claimants’ Bag but that adds nothing.

It would not make sense for them to be selling the Claimants’ Bag and the Defendants’ Bags, whether in 2017 or 2020 or 2022, side by side. The Defendants’ reliance on this as evidence that the Claimants must have known about the Defendants Bags, when it also meant that they must have known about the Claimants’ Bag made no sense and seemed to further undermine any plausible basis for finding that they were selling the Defendants’ Bags in 2017.

I am satisfied on the evidence available and find that the Defendants did not start trading the Defendants Bags in 2017 but in about November 2022. The precise date in 2022 on which the sale of the Defendants’ Bags commenced by each of ET and NT or their companies in this case does not matter in light of other intervening events (see below).

I am also satisfied that they knew about the Claimants’ Bag when they created the Defendants’ Bags. I am satisfied that their conduct including the incorporation of their companies with identical or near identical names to the Restored Company and NHBCL and the use of shopper were deliberate.

In so far as necessary I will address any further evidence in the relevant sections of this judgment.