Natasha Courtney-Smith & Anor v The Nottinghill Shopping Bag Company & Ors

A company dissolved with intellectual property assets passes those assets bona vacantia to the Crown. A third party cannot validly renew the rights without the Crown’s authority. Restoration may revest assets still held by the Crown, but it cannot revive an expired trade mark without appropriate directions and a valid application.

Goodwill cannot be separated from the business to which it relates. Deliberate dissolution may destroy goodwill where there is no contemporaneous intention to resume trading. A simple logo may qualify for copyright, but low creative freedom gives correspondingly narrow protection. Only a close copy will infringe.

The claim concerned tote bags bearing the brand name The Notting Hill Shopping Bag and a logo. The second claimant alleged trade mark infringement and passing off. The first claimant alleged copyright infringement in the logo. The defendants disputed ownership, validity, goodwill, copying and liability.

The relevant company had been dissolved in 2018 and restored in 2023. Its trade mark was purportedly renewed during the period of dissolution and later assigned to the second claimant. The central issues were whether the renewal and assignments were effective, whether goodwill survived or passed to the second claimant, and whether the defendants’ signs copied a substantial part of the logo.

1. Trade mark. The trade mark became bona vacantia and vested in the Crown when the registered proprietor was dissolved. The Crown remained the proprietor until restoration, disposal or a vesting order. Continued use by another party did not constitute use with the proprietor’s consent.
2. The purported renewal was void. Under Trade Marks Act 1994, a trade mark may be renewed at the request of the proprietor. The claimant had neither legal title nor authority from the Crown. The renewed trade mark was a nullity and had to be removed from the register. The second claimant was not the proprietor and had no standing to bring the trade mark claims.
3. Restoration generally revests assets still held bona vacantia. A party claiming a beneficial interest should apply for a vesting order. A licence or bare permission to use a mark is not equivalent to a beneficial interest. No beneficial assignment of the trade mark or business had occurred before dissolution.
4. The trade mark claims therefore failed. In any event, the mark would have been revocable for non-use because use during dissolution was not authorised by the proprietor.
5. Passing off. Goodwill is the gateway requirement. It must belong to the claimant’s business and cannot be assigned in gross or separated from that business. The goodwill of the dissolved company had been deliberately abandoned and destroyed. The evidence did not establish that the second claimant had generated sufficient independent goodwill before the defendants began trading. The passing-off claim therefore failed without determining misrepresentation or damage.
6. Copyright. The logo was an original artistic work and the first claimant owned the copyright. The creative freedom was low, however, so protection was narrow. The defendants’ signs differed materially in capitalisation, font, wording and layout. They did not copy a substantial part of the protected work. The copyright claim failed.
7. There was no joint venture. The claim for joint tortfeasor liability was insufficiently particularised and would also have failed on the facts, although no liability arose because the underlying claims failed.