Bagging Rights Gone Wrong: The Notting Hill Tote Bag Trademark Dispute and IP Ownership Lessons

The Notting Hill Shopping Bag brand was created by journalist and entrepreneur Natasha Courtenay-Smith in around 2008–09. Natasha Courtenay‑Smith created the ‘Notting Hill Shopping Bag Company Ltd’ (‘NHSBCL’) brand in 2008–09 and registered UK trademarks for both the word mark and a figurative logo in 2013 (‘Trademarks’).

The second claimant, ‘Notting Hill Bag Company Limited’ (‘NHBCL’), was incorporated in June 2017 by Mr Canbolat An, who had been one of Natasha Courtenay‑Smith’s largest wholesale customers.

When NHSBCL was dissolved in 2018, no assignments of the trademarks or goodwill were made. As a result, all intellectual property rights vested in the Crown as bona vacantia and the Trademarks later lapsed. Natasha Courtenay‑Smith and Mr Canbolat An claimed there was a gradual transition of the business from NHSBCL to NHBCL between 2017 and 2018.

Several years later, in late 2022/early 2023, two brothers incorporated companies under the names ‘The Notting Hill Shopping Bag Company Ltd’ (‘TNHSBCL’) and ‘The Notting Hill Shopper Bag Ltd” (‘NHSBL’) and began marketing similar tote bags.

TNHSBCL and NHSBL (and the two brothers personally before their incorporation) sold products, including bags, in Notting Hill for which they sought to register trademarks in January 2023 in classes 16 and 18, which included reusable shopping bags.

The defendants claimed they developed their bag designs in 2016/2017 and had been selling them on Portobello Road since 2017, allegedly without knowledge of the claimants’ products. However, their evidence was inconsistent, and the court ultimately found that sales began around November 2022, after they had seen the claimants’ bags.

Natasha Courtenay-Smith opposed the defendants’ trademark applications on 5 June 2023. She also applied to restore the dissolved company in March 2023, while Mr Canbolat An attempted unsuccessfully to renew the trademark before its expiry in May 2023.

Following restoration in October 2023, the company purported to assign the trademark to Natasha Courtenay-Smith, who then assigned it to NHBCL. Natasha Courtenay-Smith and her company issued proceedings in the IPEC for trademark infringement, passing off, and copyright infringement.

The defendants disputed all claims, arguing that the trademark had expired, any goodwill had been extinguished on dissolution, and the copyright in the bag design had not been infringed.