Notting Hill Shopping Bag
In Courtenay-Smith & or v. The Notting Hill Shopping Bag Company Ltd & ors [2025] EWHC 1793 (IPEC), the Claimants had alleged trade mark infringement, passing off and copyright infringement. In a lengthy judgment, handed down on 18 July 2025, Master Kaye, sitting as a Deputy High Court Judge found in favour of the Defendants on all counts.
The case concerned the use of a stylised form of the sign ‘The Notting Hill Shopping Bag’ (the “Sign”) for or on tote bags sold primarily on Portobello Road. The Claimants claimed ownership of a trade mark for the Sign, goodwill arising through its use, both as words and in stylised form and artistic copyright in its stylised form. The Defendants, two brothers and their companies also sold tote bags on the Portobello Road bearing similar signs.
The trade mark infringement case failed as, by reason of the dissolution of an earlier company, the trade mark in question had been bona vacantia at the point when it was due to be renewed. The Judge found that, although the Claimants might have been able to take steps to renew it, they had failed to comply with the rules under the Companies Act 2006, such that it had expired and could not be infringed. She also found that, as it had been bona vacantia for over five years, even if it had not expired, it would have been liable to be revoked for non-use, no use of it having been made with the consent of the Treasury Solicitor.
The passing off claim failed as various purported assignments of goodwill were invalid as assignments in gross. Additionally, the Second Claimant had failed to evidence a single sale of a tote bag to a member of the public prior to the relevant date for assessing passing off.
Finally, on copyright infringement, the Judge found that artistic copyright could subsist in the stylised form of the Sign. She found, however, that the creative choices that the First Claimant had made in creating the stylised form of the Sign were limited. Applying THJ v. Sheridan, she found that the scope of protection was therefore narrow and that the works created by the Defendants, which had not taken her creative choices, were thus not sufficiently close to amount to infringements.
Jamie Muir Wood, instructed by James Mitchell of JP Mitchell Solicitors, appeared for the Defendants.
