In Bentley Motors Ltd v Bentley 1962 Ltd [2020] EWCA Civ 1726, the Court of Appeal upheld the High Court’s decision that the luxury car manufacturer Bentley Motors had infringed registered trade marks belonging to small family-owned company Bentley Clothing, by using the identical trade mark on clothing and headgear.

 

Click here for the full judgement: Bentley Motors v Bentley 1962 

 

The respondent in this clash between rival users of the trade mark BENTLEY was Bentley 1962 Ltd, the holder of rights that were licensed exclusively to Brandlogic, a family firm which sold clothing under the brand ‘Bentley’ (referred to in the proceedings, collectively, as ‘Bentley Clothing’).

 

Bentley Clothing owned trade marks for the word BENTLEY and the word BENTLEY inside a lozenge shape (‘the lozenge mark’ shown below) for clothing and headgear, the earliest of which was registered in 1982 in respect of ‘articles of knitted clothing, shirts and waistcoats’.

 

 

Well-known car manufacturer Bentley Motors had made extensive use of the trade mark BENTLEY in relation to motor cars, and had also sold clothing using the word BENTLEY alone and under the device shown below since about 1987. 

 

 

From 2014, Bentley Motors had told its licensees that the B-in-wings device should always appear together with the word BENTLEY. 

 

Bentley Clothing brought infringement proceedings in relation to Bentley Motor’s sale of clothing/headgear, claiming that Bentley Motors had infringed its BENTLEY word mark.

 

An example of the alleged infringing use is shown below:

 

 

At first instance, the judge concluded that Bentley Motors had infringed Bentley Clothing’s trade marks and rejected Bentley Motors’ defence based on honest concurrent use. 

 

See the first instance judement here: First instance

 

Bentley Motors was granted permission to appeal against the decision that it had infringed the trade marks, but was refused permission to appeal ‘honest concurrent use’. 

 

One sign or two?

 

The first ground of appeal was whether Bentley Motors’ use of its combination sign, namely the word BENTLEY with the B-in-wings logo, constituted use of BENTLEY alone.

 

The court upheld the finding that the average consumer of clothing and/or headgear would perceive the use to be of two distinct signs simultaneously. 

 

Infringement under Article 5(1)(a)

 

Bentley Motors’ second ground of appeal was that the judge should have concluded that one of the conditions for double identity trade mark infringement - namely that “the use affected, or was liable to affect, one of the functions of the trade mark” - had not been satisfied.

 

However, the court said that it was clear that Bentley Motors contended that the condition was not satisfied because, but only because, its use amounted to honest concurrent use.

 

Bentley Motors was not allowed to appeal the rejection of its defence of honest concurrent use and so was not considered to have acted honestly with regard to the rights of the smaller company.

 

The court noted that Bentley Motors had unsuccessfully sought revocation of the trade marks owned by Bentley Clothing in an attempt to force the smaller company to cease trading.

 

The extent of Bentley Motors’ defence under the transitional provision

 

Bentley Clothing did not dispute that Bentley Motors had a defence to Bentley Clothing’s claim for infringement of its lozenge mark due to the application of transitional provision relating to the “new” trade mark law.

 

See here schedule 3, paragraph 4 in: Trade Marks Act 1994

 

Bentley Motors had sold jackets, silk ties, scarves and caps prior to 31 October 1994.

 

As none of those goods were identical to ‘articles of knitted clothing, shirts and waistcoats’, the use of the word BENTLEY in relation to those goods did not infringe under the Trade Marks Act 1938.

 

However, in its third ground of appeal, Bentley Motors argued that the judge should have found that the defence extended to (a) a wider range of clothing, apart from articles of knitted clothing, shirts and waistcoats and (b) any use of the word BENTLEY in relation to such goods.

 

The court found no basis for broadening the judge’s formulation of the kind of use to which the defence extended. 

 

Accordingly, Bentley Motors’ appeal was dismissed.

 

Comment

 

This judgment highlights the power of trade mark law to protect brand owners from infringement: even a well-known car brand such as Bentley Motors will fail (and did fail) if the odds are stacked against it. Bentley Motors is now legally prevented from selling clothing under the BENTLEY mark, and has lost a valuable marketing tool for attracting new customers for its luxury cars.

 

Our full article on this case appears in the Journal of Intellectual Property Law & Practice: 2021, Vol. 16, No. 3 

 

For more information on our team's work on Trade Marks and brand protection, see our page: Trade Marks