Jane Lambert
Intellectual Property Enterprise Court (Master Kaye sitting as a Deputy High Court Judge) Courtenay-Smith and another v The Notting Hill Shopping Bag Company Limited and others [2025] EWHC 1793 (IPEC) (18 July 2025)
This was a claim for copyright and trade mark infringement and passing off and a counterclaim for revocation and invalidation of the second claimant's trade mark. The action and counterclaim came on for trial before Master Kaye sitting as a deputy judge of the High Court on 7 and 8 April 2025. The learned master handed down her judgment in Courtenay-Smith and another v The Notting Hill Shopping Bag Company Limited and others [2025] EWHC 1793 on 18 July 2025. For the reasons discussed below, the deputy judge dismissed the claim and allowed the counterclaim.
The Parties
The first claimant was Natasha Courtenay-Smith. The deputy judge referred to her as "NC-S" in her judgment. Ms Courtenay-Smith claimed to have designed the following logo in 2008 or 2009:
She contended that the logo was an "artistic work" within the meaning of s 4 (1) of the Copyright Designs and Patents Act 1988, that copyright subsisted in the work pursuant to s.1 (1) (a) and that she was the first owner of such copyright as the author of the work by virtue of s.11 (1). She reproduced that logo on tote bags that she supplied to traders in the Portobello Road.
The second claimant was The Notting Hill Bag Company Limited, which the master abbreviated to "NHBCL". The company claimed to be the registered proprietor of UK trade mark number UK00003004468 under which the logo and the words "THE NOTTING HILL SHOPPING BAG" were registered for bags, shopping bags and carrier bags in class 18. According to the claimants, the company manufactured from cotton or natural jute, advertised, offered for sale and/or sold sustainable and eco-friendly bags emblazoned with the logo. The bags were known as the "Notting Hill Shopping Bag".
The first defendant was the Notting Hill Shopping Bag Company Limited, which was incorporated by Nangialai Takanai, the second defendant. The deputy judge referred to the first defendant by the abbreviation "NHSBCL" and the second defendant by the initials "NT". The third defendant was The Notting Hill Shopper Bag Limited, which was incorporated by Mr Nangialai Takanai's brother, Ehsanullah, the fourth defendant. The master referred to the third defendant by the abbreviation "NHSBL" and the fourth by the initials "ET".
The Dispute
The defendants have sold the following bags:
Ms Courtenay-Smith complained that the manufacture, marketing and distribution of those bags infringed her copyright. The Notting Hill Bag Company Limited complained that such manufacture, marketing and distribution infringed its trade mark under s.10 (2) of the Trade Marks Act 1994 and that by such manufacture, marketing and distribution the defendants passed off their business as and for the second claimant's.
The defendants denied that copyright subsisted in Ms Courtenay-Smith's logo or that they had copied it. They denied that the second claimant's trade mark had been validly renewed. They counterclaimed for the marks' revocation for non-use under s.46 (1) of the Trade Marks Act 1994 and/or its invalidation under s.47 (1) on the grounds that it was devoid of distinctive character and was entirely descriptive. They also denied that their acts amounted to trade mark infringement. They denied that the claimants owned any goodwill in shopping bags by reference to the logo and word mark. They contended that the differences between their bags and the claimants' were sufficient for the average consumer to distinguish them.
The Issues
At a case management conference which took place on 30 July 2024, the court ordered the following issues to be tried:
1. Is the Trade Mark invalidly registered and liable to be deleted from the register because:
a. It expired on 2 May 2023 and was not properly renewed on 22 March 2023 by the Second Claimant because it was bona vacantia and, at all relevant times, property of the Crown such that it was not renewed by or with the authority of the Treasury Solicitor; and/or
b. Pursuant to s.47 (1) of the TMA 1994:
i. It is devoid of distinctive character, pursuant to s.3 (1) (b) of the TMA 1994; and/or
ii. It consists exclusively of a sign which may serve in the trade to designate the kind, intended purpose and geographical origin of the goods for which it is registered pursuant to s.3 (1) (c) of the TMA 1994?
2. Is the Trade Mark liable to be revoked on the basis that it has not been put to genuine use for a continuous period of five years ending on 10 April 2023 or 11 October 2023 pursuant to sections 46 (1) (b) and 46 (3) of the TMA 1994?
3.
Is the Second Claimant the proprietor of the Trade Mark?
4.
As a result of the similarity between the Trade Mark and the Notting Hill Word Sign and because the Notting Hill Word Sign has been used in the course of trade in relation to goods which are identical to those for which the Trade Mark is registered, is there a likelihood of confusion on the part of the public including a likelihood of association?
5.
Is the Second Claimant the proprietor of any goodwill associated with the Brand Name and/or the Logo?
6.
Have the Claimants expressly consented to the acts carried out by the Defendants about which complaint is made such that the Claimants are estopped from bringing a claim for passing off?
7.
Has the Defendants’ offering for sale of the Defendants’ Bags under and/or by reference to the Defendants’ Signs led to and/or is likely to lead to a substantial proportion of the relevant public in the United Kingdom being deceived into believing that those goods are the goods of the Claimants and/or, alternatively, goods connected with and/or authorised or approved by the Claimants or otherwise subject to some commercial arrangement with the Claimants, contrary to the fact?
8.
Did the Defendants carry out the acts complained of with an intention to deceive?
9.
Is the Logo an original artistic work within the meaning of sections 1 (1) (a) and 4 (1) (a) of the CDPA 1988?
10.
Is the First Claimant the proprietor of any copyright which subsists in the Logo?
11. Have the Defendants infringed any copyright which subsists in the Logo by doing and/or, pursuant to
s.16 (2) of the CDPA 1988, authorising another to do any of the following:
a. Copying the Logo (or a substantial part thereof) contrary to
section 17 of the CDPA 1988;
b. Issuing copies of the Logo to the public contrary to
section 18 of the CDPA 1988; and/or
c. Possessing, in the course of business, selling or exposing for sale an article (namely the Defendants’ Bags) which is and which the Defendants knew and/or had reason to believe is an infringing copy of the Logo, contrary to
section 23 of the CDPA.
12.
To the extent that the Defendants are liable for any act of copyright infringement, were those acts flagrant pursuant to
section 97 (2) of the CDPA 1988?
13.
Was there a joint venture between the First Claimant, the Restored Company and the Second Claimant and/or between the Restored Company and the Second Claimant, as alleged? If so, what were the terms and nature of the joint venture?
14. Are the Defendants jointly liable for any act of trade mark infringement, passing off and/or copyright infringement?
Issue 1 (a) Is the Trade Mark invalidly registered and liable to be deleted from the register because:
(a) It expired on 2 May 2023 and was not properly renewed on 22 March 2023 by [NHBCL] because it was bona vacantia and, at all relevant times, property of the Crown such that it was not renewed by or with the authority of the Treasury Solicitor.
Master Kaye gave her answer in para [111] of her judgment:
"For the reasons set out below:
i) The Trade Mark was invalidly renewed and registered on 22 March 2023. It expired on 2 May 2023. The Renewed Trade Mark is a nullity not simply invalid and should be deleted/removed or marked dead as appropriate on the register. The Defendants are entitled to declarations to that effect.
ii) The effect of that is that NHBCL is not the proprietor of the Renewed Trade Mark and never was the proprietor of the Trade Mark and cannot advance claims in its capacity as proprietor of it.
iii) For the reasons set out below NHBCL did not acquire a beneficial interest in the Trade Mark whether through use or an intention to transfer the Trade Mark prior to dissolution and the business as a whole had not been beneficially assigned to NHBCL in June 2017. NHBCL was not in a position to apply for a vesting order and in any event did not do so.
iv) Even if NHBCL had had any beneficial interest in the Trade Mark or any licence to use the Trade Mark prior to 2 May 2023 those rights would have fallen away at the latest when the Trade Mark expired and/or when it was not renewed or restored."
Before stating the reasons for her decision, the learned deputy judge inserted the following chronology:
Date | Event | Comment |
2008-2010 | NC-S develops the Logo and starts to sell the Claimants’ Bag wholesale on Portobello Road | Claimants’ Bag initially sold wholesale by NC-S personally before the Restored Company was set up in 2010 |
6 April 2010 | Incorporation of the Restored Company | NC-S director and shareholder. Claimants’ Bag continues to be sold wholesale now through Restored Company. |
May 2013 | Organic Hill incorporated | CA’s company used as a wholesaler for the Claimants’ Bag and continuing to trade |
2 May 2013 | Application for the Trade Mark | Applicant is the Restored Company |
11 October 2013 | Trade Mark registered | |
3 June 2017 | Email between NC-S and CA about the future of the Claimants’ Bag business | |
7 June 2017 | Email NC-S to CA about the transition of the business | |
13 June 2017 | NHBCL incorporated | |
16 December 2017 | The Restored Company’s accounts to 31 August 2017 are signed by NC-S | |
23 January 2018 | Notice of proposed dissolution of the Restored Company. | The notice specifically records “Upon dissolution all property rights vested in, or held in trust for, the company are deemed to be bona vacantia and accordingly belong to the Crown.” |
10 April 2018 | The Restored Company is dissolved | The IP rights including the Trade Mark, pass Bona Vacantia |
January 2023 | Prior to 10 January 2023 NC-S confronted Defendants at 93 Portobello Road about their sale of the Defendants’ Bags. | |
January 2023 | Prior to 10 January 2023 NC-S/NHBCL discover that the Trade Mark is still registered in the name of the Restored Company. | |
10 January 2023 | Letter: Briffa to Bona Vacantia Department (“BVD”) of Government Legal Department on behalf of NC-S | NC-S seeks to assign the Trade Mark to herself. |
11 January 2023 | NC-S applied for a trade mark | |
30 January 2023 | BVD email Briffa | BVD explain that NC-S will either need to restore the Restored Company or purchase the Trade Mark. |
16 February 2023 | Part 8 application to restore the Restored Company submitted to court (“the Application”) | Application made by NC-S as director and shareholder |
7 March 2023 | Application is issued. | The purpose of the Application is said to be to enable the Trade Mark to be assigned to NC-S |
22 March 2023 | CA applies to renew the Trade Mark by filing a TM11 (“the Renewed Trade Mark”) | “It is understood that the email from UKIPO was in [NC-S] name. However, I completed the renewal of the trade mark on behalf of [NC-S] and the company.” CA1 at [33] |
2 May 2023 | Trade Mark expires | |
23 August 2023 | Organic Hill assigns any IP rights or goodwill associated with the Brand or Logo to NHBCL. | However, Organic Hill continues to trade the Claimants’ Bag |
7 September 2023 | Restoration order | |
12 October 2023 | Restoration order registered at Companies House. | |
22 October 2023 | Restored Company assigns the Renewed Trade Mark to NC-S | |
22 October 2023 | NC-S assigns the Renewed Trade Mark to NHBCL | |
2 November 2023 | End of 6-month grace period to apply to renew Trade Mark | |
21 November 2023 | Duncan Gordan assigns all IP rights in the Logo to NC-S. | |
24 November 2023 | Claim issued | |
2 May 2024 | End of period to apply to restore the Trade Mark | |
The chronology refers to a "Restored Company". That was a private company incorporated with limited liability by Ms Courtenay-Smith on 6 April 2010 in the name of
The Notting Hill Shopping Bag Company Limited under company number
07212588. The deputy judge described that company as Ms Courtenay-Smith's "trading vehicle for her business" of selling tote bags featuring the logo.
The trade mark that that company registered on 2 May 2013 was trade mark number UK00003004468 which the second claimant subsequently claimed to have acquired. The deputy judge referred to it as "the Renewed Trade Mark."
Ms Courtenay-Smith asked for the company to be dissolved and struck off the register on 10 April 2018. At the time of its dissolution, the company was the registered proprietor of trade mark UK00003004468 and the owner of any goodwill in relation to shopping bags marked with Ms Courtenay-Smith's logo and word mark. Ms Courtenay-Smith did not arrange for the company to assign that trade mark or any right to bring an action for passing off either to herself or to any other person before the dissolution of the company.
According to para [30] of the judgment, Ms Courtenay-Smith said that the claimants first became aware that the defendants were selling their bags from premises on the Portobello Road in competition with them in early January 2023. As the trade mark and goodwill were held by the dissolved company, Ms Courtenay-Smith applied for that company to be restored to the register on 12 Oct 2023. Because the second claimant had been incorporated in the dissolved company's former name, company number 07212588 was restored to the register in the name of 07212588 LIMITED.
The master held at para [118] that when company number
07212588 was dissolved on 10 April 2018, it ceased to exist. Its assets at the time of dissolution, including the trade mark, automatically passed
bona vacantia to the Crown and vested in the Crown pursuant to
s.1012 (1) of the Companies Act 2006. Master Kaye added at [120]:
"It does not matter that the Crown did not know that the assets had vested in it. It does not matter that between April 2018 and January 2023 no one else knew that the Trade Mark or any other associated intellectual property rights that had been owned by the Restored Company had vested in the Crown. It does not matter for these purposes that CA/NHBCL continued to use the Trade Mark, Logo and/or Brand name. From 10 April 2018 the intellectual property rights of the Restored Company including the Trade Mark had vested in the Crown and the Restored Company had ceased to exist. Only the Crown was in a position to give permission for any continued use of the Logo or the Brand name or the Trade Mark that had belonged to the Restored Company. Any continued use was without the permission or consent of the proprietor."
Ms Courtenay-Smith applied for the assets of company number 07212588 to be restored to the company. The master observed at [137] that if the trade mark had been an asset of the restored company on 12 Oct 2023, it would have revested in the restored company without further order. Unfortunately for the claimants, trade mark number UK00003004468 had expired on 2 May 2023. The deputy judge noted at [138] that the Crown does not generally incur costs in relation to assets that have passed to it
bona vacantia. Instead, it will generally disclaim such assets. She observed at [139] that t
he Crown had not been asked to renew the trade mark. It had not been asked to authorize, nor had it authorized, anyone else to renew the registration on its behalf. The Crown had not sold, transferred or vested the trade mark in anyone else by the time it expired. There was therefore no trade mark to be revested or restored to company number 07212588 when the restoration order was made. Ms Courtenay-Smith had not sought any additional directions under
s.1032 of the Companies Act 2006 that may have permitted the company to take steps to renew or restore the trade mark and or extend any time for doing so or to ratify some act taken or to be taken on behalf of the company while it was dissolved.
On 22 March 2023, Mr Canbolat An, the sole director and shareholder of the second claimant, purported to renew the trade mark without the authority or permission of the Crown. Master Kaye observed at [141] that Mr An had no authority ot legal basis to renew the trade mark and any such purported renewal would have been a nullity.
Only the Crown, through the Bona Vacantia Division, would have been in a position to renew the mark or give authority for someone else to do so.
Following its restoration, company number 07212588 purported to assign the trade mark to Ms Courtenay-Smith. She, in turn, purported to assign it to the second claimant. The master observed at [149] that those assignments were of no effect in respect of the trade mark because the purportedly renewed mark was a nullity. The master added at [158] that:
"Once restored the Restored Company may have been able to take steps to apply to renew the Trade Mark during the six-month grace period permitted in accordance with
section 43 (3) of the TMA 1994 and
rule 36 (2) of the Trade Mark Rules 2008 (the “2008 Rules”), before 2 November 2023. It may have been able to apply to restore the Trade Mark under section 43 (5) of the TMA 1994 and
rule 37 (1) of the 2008 Rules, before 2 May 2024. Whilst Dr Muir Wood submits that it would have been hard for NC-S to satisfy the conditions of such an application, no such application was made."
Issue 1 (b) Is the Trade Mark invalidly registered and liable to be deleted from the register because:................................
b. Pursuant to s.47 (1) of the TMA 1994:
i. It is devoid of distinctive character, pursuant to s.3 (1) (b) of the TMA 1994; and/or
ii. It consists exclusively of a sign which may serve in the trade to designate the kind, intended purpose and geographical origin of the goods for which it is registered pursuant to s.3 (1) (c) of the TMA 1994?
The learned deputy judge's response to this question was that the trade mark expired on 2 May 2023, and the allegedly renewed mark was a nullity for the reasons set out in response to Issue 1 (a). There was at the time of trial no current, valid and subsisting trade mark and that was the end of the issue.
She added at [207] that distinctiveness is acquired through use. It would have been up to the second claimant to demonstrate that the trade mark had acquired a distinctive character through use. Even if the claimants had been able to evidence some use or acquired distinctiveness or character up to 10 April 2018, they could not demonstrate use of the mark by company number 07212588 or with its consent from 11 April 2018 and the mark's expiry on 2 May 2023.
She noted that the defendants had said that the Trade Mark was invalidly registered in any event because it was devoid of distinctive character or consisted of a sign designating the intended purpose of the goods and services for which it was registered. They had cited s.3 (1) (b) and (c) of the Trade Marks Act 1994 and Mr Justice Arnold's judgment in
Starbucks HK Ltd v British Sky Broadcasting Group Plc [2012] EWHC 3074 (Ch). Given her decision about UK00003004468 and pending applications in the UK Intellectual Property Office, she did not intend to say more about distinctiveness or any other aspect of the invalidity issue.
Issue 2. Is the Trade Mark liable to be revoked on the basis that it has not been put to genuine use for a continuous period of five years ending on 10 April 2023 or 11 October 2023 pursuant to sections 46 (1) (b) and 46 (3) of the TMA 1994?
The deputy judge noted at para [190] that for the purposes of the revocation/non-use defences, the defendants relied on two separate five-year periods.
"i) The period of five years from the dissolution of the Restored Company being 11 April 2018 to 10 April 2023. The Restored Company remained dissolved throughout that period during which time the Trade Mark was vested in the Crown.
ii) The period 12 October 2018 to 11 October 2023. Although the restoration order was made on 7 September 2023, it was not in fact registered at Companies House until 12 October 2023. The Restored Company remained dissolved throughout this period. Had the Trade Mark not expired on 2 May 2023 it would have continued to have been vested in the Crown. Even the Renewed Trade Mark would have been vested in the Crown if there had been any valid renewal."
The learned deputy judge observed at [197] that there can have been no genuine use of the trade mark in the first 5-year period the defendants relied on. Although the mark had not expired, it was vested in the Crown during that entire period. Nor could the second claimant rely on any use by that company after the expiry of the mark because the mark had ceased to exist. It followed that the defendants were entitled to an order for revocation for non-use under either head.
Issue 3. Is the Second Claimant the proprietor of the Trade Mark?
The master's answer to that question at para [189] was that, for the reasons set out above, the second claimant was not and never had been the owner of UK00003004468, nor did it have a beneficial interest in that mark before the mark's expiry. It was not, therefore, the proper party to make any of the trade mark claims.
Issue 4. As a result of the similarity between the Trade Mark and the Notting Hill Word Sign and because the Notting Hill Word Sign has been used in the course of trade in relation to goods which are identical to those for which the Trade Mark is registered, is there a likelihood of confusion on the part of the public including a likelihood of association?
The master remarked that this was a claim under s.10 (2) of the Trade Marks Act 1994 brought by the second claimant. She noted at [211] that an infringement action has to be brought in relation to a registered trade mark and that when this claim was issued, there was no subsisting registered trade mark for the reasons set out above. She added in the next paragraph that an infringement action has to be brought by a proprietor or with its consent, and that the second claimant was not and never had been the proprietor of the trade mark. She continued that the trade mark had passed bona vacantia to the Crown on 10 April 2018 and remained vested in the Crown when the infringing acts are said to have commenced in about November 2022. She concluded that the trade mark expired on 2 May 2023 and was not validly renewed on 22 March 2023. From 3 May 2023, there was no subsisting trade mark to infringe. The trade mark was not subsequently renewed or restored following restoration of company number 07212588, and it was too late to renew the registration when the judgment was delivered.
Issue 5 Is the Second Claimant the proprietor of any goodwill associated with the Brand Name and/or the Logo?
The learned deputy judge directed herself as follows at para [216]:
"The claim in the tort of passing off is intended to protect a claimant’s goodwill generated by their business as a whole. It is not about the Logo as such. Unlike the trade mark claims, claims in passing off can be brought by anyone who can establish the three ingredients of goodwill, misrepresentation and damage. That is a question of fact. In principle therefore a claim by NHBCL does not suffer from the same issues in relation to proprietorship as the Trade Mark claims."
She added at [220]:
"Goodwill is the gateway requirement. If NHBCL cannot establish goodwill in the business on the facts, then misrepresentation and damage fall away even if there might be facts that would support a finding of misrepresentation subject to the establishment of goodwill."
The deputy judge held at para [240] that any goodwill subsisting in company number 07212588 including any goodwill that had passed to it from Ms Courtenay-Smith was abandoned or extinguished as a consequence of the dissolution on 10 April 2018. The dissolution of that company on 10 April 2018 was more than a mere cessation of business. It was a voluntary, positive and deliberate choice by Ms Courtenay-Smith to cease to trade. The subsequent restoration was intended to be for the limited purpose of enabling the company to transfer the trade mark to Ms Courtenay-Smith. It was not for the purpose of transferring any residual business or for trading. Consequently, any goodwill subsisting in company number 07212588 at the time of its dissolution was destroyed. The destruction of the goodwill in April 2018 meant that it could not have been vested in company number 07212588 in October 2023. It followed that there had been no goodwill to assign in the 2023 assignments even if those assignments were likely to have been effective.
The defendants accepted that the second claimant might have acquired some goodwill in its own right but contended that there was no evidence that such goodwill related to the logo or word mark. Master Kaye said at [292]:
"Whilst a modest level of goodwill can be sufficient, I am not satisfied that the evidence establishes goodwill in the business related to the Logo and the Brand Name and the Claimants’ Bag between April 2018 and November 2022."
She concluded at [293]:
"As set out above goodwill is a gateway requirement to be able to sustain a claim in passing off. I am not satisfied that NHBCL has been able to establish goodwill in its business for the relevant period"
Since the second claimant had not established goodwill, she did not have to consider misrepresentation or damage. It followed that the claim for passing off failed. She made no further findings on Issues 6 to 8,
Issue 9. Is the Logo an original artistic work within the meaning of sections 1 (1) (a) and 4 (1) (a) of the CDPA 1988?
Master Kaye directed herself at [297] that the law on the subsistence of copyright is governed by sections. 1, 4, 9 and 11 of the Copyright, Designs and Paatents Act 1988. Referring to Case C-5/08
Infopaq International A/S v Danske Daglades Forening [2009] EUECJ C-5/8, [2010] FSR 20, EU:C:2009:465, [2012] Bus LR 102, [2009] ECDR 16, ECLI:EU:C:2009:465, [2009] EUECJ C-5/08, [2009] ECR I-6569 she noted that for artistic copyright to subsist the work must be original in the sense that it must be the author’s own intellectual creation. Citing Case C-145/1
Painer v Standard Verlags GmbH EU:C:2011: 798 she added that the test is not about artistic merit but rather about making free and creative choices
.
The master noted at [307] that the artistic threshold is not high, but Ms Courtenay-Smith had to demonstrate that she had made creative choices in relation to the logo. She had explained the choices she had made in relation to the layout. She emphasized the use of lower-case “t” at the start of “the”, the full stop, the left justification and the 4 rows of text as well as the bold modern fonts.
Referring to Lord Justice Arnold's judgment in THJ v Sheridan that the correct test for originality was as set out in Infopaq but that the threshold for originality was a low one, the master noted that there needed to be some room for creative freedom. However, even a simple logo such as the one in this case could attract protection. Lord Justice Arnold had explained that even where the degree of visual creativity was low it did not imply an absence of copyright. Instead it affected the scope of the protection conferred by the copyright. The protection in such a case might be correspondingly narrow so that only a close copy would infringe.
Adopting the same approach the deputy judge found that despite the limitations of the evidence the various components of the logo relied upon by Ms Courtenay-Smith did demonstrate some creative freedom of choice in the way in which they had been put together to create the logo. The deputy judge satisfied herself at [320] that artistic copyright did subsist in the logo. However, the level of creative freedom used in creating it was low and that affected the level of copyright protection to which the work was entitled which was correspondingly low. She found that the protection to which the logo was entitled was limited in scope such that only a close copy would infringe the copyright in the logo.
I
ssue 10. Is the First Claimant the proprietor of any copyright which subsists in the Logo?
Ms Courtenay-Smith said that she had designed the logo in conjunction with her brother in law who had been a graphic designer with a good understanding of typography and fonts. On 21 Nov 2023 shortly before issuing this claim Ms Coutenay-Smith entered into a legal assignment with Mr Gordon by which he assigned all his intellectual property rights in the Logo to her. The learned master remarked at [306] that although Mr Gordon could have been asked to provide a witness statement which explained the design process and his involvement, she was satisfied that any artistic copyright in the logo would be owned by Ms Courtenay-Smoth and would not have been assigned to
company number 07212588.
Issue 11. Have the Defendants infringed any copyright which subsists in the Logo by doing and/or, pursuant to s.16 (2) of the CDPA 1988, authorising another to do any of the following:
a. Copying the Logo (or a substantial part thereof) contrary to section 17 of the CDPA 1988;
b. Issuing copies of the Logo to the public contrary to section 18 of the CDPA 1988; and/or
c. Possessing, in the course of business, selling or exposing for sale an article (namely the Defendants’ Bags) which is and which the Defendants knew and/or had reason to believe is an infringing copy of the Logo, contrary to section 23 of the CDPA.
The deputy judge directed herself at [321] that copyright infringement was governed by s.16 of the 1988 Act. Refreeing to s.16 (3) (a) she said that an artistic work will only be infringed if a substantial part of the work had been copied. The defendants had admitted selling their bags. The question in relation to the defendants signs and bags was whether they had reproduced a substantial part of the logo in view of the limited scope of the protection to which Ms Courtenay-Smith had been entitled. That required consideration of what parts of the logo had been copied and whether they were the parts that provided the logo with copyright protection. The deputy judge added that was a qualitative assessment and not a quantitative one.
Comparing the defendants' bags to the logo the deputy judge found the differences striking. Given the nature of the artistic copyright work and those features that were relied on as giving rise to the copyright as setting the logo apart as a creative work, she was not satisfied that the defendants had copied a substantial part of that work. Taking account of the low degree of creativity, the scope of the protection conferred by the copyright was correspondingly narrow. On the basis of a qualitative assessment the deputy judge was not satisfied that the defendants' bags were close copies. It followed that the defendants were not liable for copyright infringement because of their use of their signs.
Issue 12. To the extent that the Defendants are liable for any act of copyright infringement, were those acts flagrant pursuant to section 97 (2) of the CDPA 1988?
Master Kaye said at [337] that if there was no copying it followed that there could not have been flagrancy within the meaning of s.97 (2) of the 1988 Act.
Issue 13. Was there a joint venture between the First Claimant, the Restored Company and the Second Claimant and/or between the Restored Company and the Second Claimant, as alleged? If so, what were the terms and nature of the joint venture?
The master said at para [338] that the claimants had conceded in closing there had been no joint venture.
Issue 14. Are the Defendants jointly liable for any act of trade mark infringement, passing off and/or copyright infringement?
As the defendants were not liable to the claimants under any of their causes of action, this issue did not arise. However, the claimants had not pleaded any facts or matters that could have given rise to joint liability. Had she been required to decide the issue, Master Kaye would have found against the claimants.
Conclusion
This is a very long and complex judgment on three commonly occurring causes of action that often arise in the same proceedings. The takeaway from this case is the need for attention to detail, particularly when establishing title and standing. Had the claimants sought permission for company number 07212588
to renew trade mark number UK00003004468 the outcome might have been different. Ms Courtenay-Smith and her advisors must be very disappointed with this judgment. Especially as her evidence on all essential points was accepted. It will be interesting to see whether there is any appeal and if so how it will be conducted. Anyone wishing to discuss this case may call me on 020 7404 5252 during UK office hours or send me a message through my
contact form at any time.
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