Navigating IP Challenges: lessons from the Courtnay-Smith case

Yasmin Kalantari, Senior Associate

A recent decision in the Intellectual Property Enterprise Court has once again highlighted the importance of ensuring that intellectual property rights are managed properly in the event of cessation of a business and dissolution of a company.  In  Courtnay-Smith & Anor v The Notting Hill Shopping Bag Company Ltd & Ors [2025] EWHC 1793 (IPEC), the Judge found that the Claimants did not own the trade mark in respect of which they were claiming trade mark infringement due to a corporate restructure which resulted in the trade mark being deemed ‘bona vacantia’ and therefore passed to the Crown. The trade mark infringement claim failed as a result.  The Judge also found the Second Claimant (i) did not own goodwill which it said had been assigned to it and (ii) did not provide sufficient evidence of accrued goodwill.  The passing off claim therefore also failed.

Key points to takeaway:

1. Be careful if your business has IP assets and you are planning on a corporate restructuring or company dissolution. You should ensure that all assets are transferred prior to dissolution otherwise they will be deemed bona vacantia.
2. If you think that IP assets have passed to the Crown unintentionally following dissolution of your company, it is still worth seeking advice.  There are various options which may be available to you to regain ownership of the IP asset. These include restoration of your company for this specific purpose or buying the asset back from the Crown for an agreed price.
3. Any transfer of IP rights should be recorded in writing and signed by the parties. A record of changes of ownership should also be made at the relevant IP registries.
4. A transfer of goodwill should always be in the context of a transfer of the underlying business – it is generally impermissible to separate the two.