The Intellectual Property Enterprise Court has dismissed claims for trade mark infringement, passing off and copyright infringement made by Natasha Courtenay-Smith against two Portobello Road market traders. The ruling highlights the dangers of reinstating dissolved companies solely to reclaim lost rights, without properly considering the rules that oversee renewal and restoration.
In 2013, Ms Courtenay-Smith's company registered the figurative UK trade mark shown below ("the Trade Mark") in respect of the Logo and the brand name THE NOTTING HILL SHOPPING BAG ("the Brand Name").
The Trade Mark was registered for goods in Class 18 corresponding to bags, shopping bags and carrier bags. The tote bags that featured the Logo were made from cotton and jute, and had attracted attention from the celebrity world. For instance, in October 2010, a cupcake-themed bag was advertised, which had a cupcake design on one side and the Logo on the other, created by Natalie Imbruglia. This collaboration was highlighted in local media as well as in the Daily Mail and OK! Magazine. In 2011, the Sunday Mail published a brief article about Ms Courtenay-Smith and her bag. Around August 2012, the bag was given to the now Princess of Wales during her visit to Portobello Road, although the tote bags in the photograph from that visit did not display the Logo side.
The first defendant, The Notting Hill Shopping Bag Company Limited (the same name as Ms Courtenay-Smith's dissolved company), was incorporated by the second defendant Nangialai Takanai (NT), an Afghan businessman. The third defendant, The Notting Hill Shopper Bag. Ltd ("NHSBL") was incorporated by the fourth defendant, Ehsanullah Takani (ET), on 30 November 2022. NT and ET are brothers.
The claimants discovered that the defendants were selling "THE NOTTING HILL SHOPPER BAG" and "THE CAMDEN TOWN SHOPPING BAG" (shown below) from premises on the Portobello Road in early January 2023.
This led to the discovery that the Trade Mark had not been transferred out of Ms Courtenay-Smith's company before its dissolution.
Ms Courtenay-Smith claimed that the defendants had infringed her artistic copyright subsisting in the Logo and the Notting Hill Bag Company Limited claimed trade mark infringement by the defendants because of their use of the sign Notting Hill Shopper Bag ("the Notting Hill Word Sign"), the sign THE CAMDEN TOWN SHOPPING BAG ("the Camden Word Sign") ("the Defendants' Signs") and the following device on its bags ("the Defendants' Bags"):
Additionally, the Notting Hill Bag Company Limited complained that the defendants' use of the Defendants' Signs constituted passing off.
Decision
The court found that the trade mark had lapsed when Ms Courtenay-Smith's company had been voluntarily dissolved, making the mark bona vacantia (Crown property), and the renewal of the trade mark by the second claimant, the Notting Hill Bag Company Limited, was declared invalid as only the Crown could authorise the renewal, and there had been no beneficial ownership or proper assignment of the trade mark before the dissolution. Consequently, the Notting Hill Bag Company Limited lacked the standing to initiate the claims, as it was not the proprietor of the Trade Mark.
The passing-off claim also failed, as the Notting Hill Bag Company Limited had not established goodwill in the business associated with the brand name and/or the logo.
Further, although Ms Courtenay-Smith was the proprietor of the copyright in the Logo, the court found that the level of creative freedom used in creating the Logo was low, which meant that the protection was corresponding narrow. As the defendants' signs were not close copies of the Logo, there was no act of copyright infringement.
Comment
The outcome seems particularly unfortunate for the claimants, given that in the judge's view that as witnesses, "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". In light of the judge's criticisms of the defendants' conduct and the negative outcome for the claimants, the judgment serves as a clear caution for businesses to diligently monitor the ownership of their trade marks and to stay updated on renewal deadlines. Specifically, in instances where an entity is dissolved, it is imperative for the trader to ensure that all intellectual property rights are properly assigned away from the company beforehand.
Case reference: Courtnay-Smith v The Notting Hill Shopping Bag Company Ltd [2025] EWHC 1793 (IPEC) (18 July 2025).
Our full article on this case will appear in Entertainment Law Review Issue 8 published in September 2025
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