The UK High Court has produced a decision in which a family run clothing business has overcome the luxury car giant Bentley Motors regarding the use of the trademark ‘BENTLEY’ on clothing items.
The facts of the case were as follows:
Bentley Clothing’s business began as an independent family business in the early 1960’s, and was never anything to do with Bentley Motors. The business had been passed down a number of generations through various entities, before being transferred into to Bentley Clothing, along with a relevant trademark, in 1998. The clothing business and mark was unconnected to Bentley Motors.
1962 Ltd held the intellectual property rights to the BENTLEY word trademark, which it licensed exclusively to the second claimant, Brandlogic. Brandlogic was a family firm which sold clothing under the brand ‘Bentley’. 1962 Ltd and Brandlogic, the claimants, were referred to collectively as ‘Bentley Clothing’.
The defendant, Bentley Motors (BM), is a famous manufacturer of luxury cars. As with many modern car manufacturers, BM branched out from producing vehicles, and began to produce merchandise associated with the car brand. Since the late 1980’s, BM merchandise also included various items of clothing and headgear.
In 1998 Bentley Clothing and BM had some discussion regarding a licence of the BENTLEY mark to the defendant; however no agreement was ever reached.
Since 2017 the parties were engaged in litigation over the use of the BENTLEY trademark, after BM made an application to the UKIPO to declare Bentley Clothing’s mark ‘BENTLEY’ invalid.
Bentley Clothing relied upon 3 registered UK trademarks, 2 of which included the word ‘BENTLEY’. This particular case revolved around the use by BM of their famous winged-B mark, and their associated use of the word BENTLEY reproduced underneath the winged-B. This was referred to as the ‘Combination Sign’ by the court. Whilst the claimant did not object to the use by BM of the winged-B, they did object to the use of the Combination Sign when used on clothing and headgear.
Figure 1: The Combination Sign
The Combination Sign
One of the issues before the Court was whether the Combination Sign was to be interpreted as one sign or two distinct signs. This was crucial to the case as it was important to establish whether the average consumer would have perceived the signs to be one sign or distinct signs (and therefore, whether the sign could be said to be identical, in the case of the use of the word BENTLEY, or just similar, in the case of the winged-B containing the word BENTLEY).
Evidence was placed before the Court showing that BM had used the Combination Sign since 2005 in such a manner as to treat the Combination Sign as distinct signs. This evidence included clothing labels which referred to the signs as separate trademarks, and the terms of conditions of BM, which referred to the signs as separate registered trademarks. The Court stated that they believed the distinction between whether the Combination Sign was one sign and two was of no concern to BM until 2014, at which point BM began to expressly treat the Combination Sign as a single sign. The Court formed the view that because of the historic use of the signs as separate signs, and the use by BM of the word BENTLEY (without the winged-B) on items other than clothing, the average consumer would recognise the signs as distinct marks.
As the Court found the marks to be distinct, it considered that use of the word BENTLEY by BM was use of an identical mark. The finding of the Court was therefore that the Combination Sign constituted an infringement of the 2 UK trademarks of the claimant which contained the word BENTLEY pursuant to s.10 (1) of the Trade Marks Act 1994 Act (use of a sign which is identical to a trademark and the use of that sign in relation to goods or services which are identical to those which the trademark is registered against).
The likelihood of confusion
Bentley Clothing also put forward an alternative argument, in case the above argument failed, which stated that BM’s use of the Combination Sign would have a high likelihood of confusion for consumers (thereby constituting a breach of s.10(2) of the Trade Marks Act 1994). Although the Court did not consider this issue in depth, they did refer to the case of Maier v ASOS Plc  EWCA Civ 220,, in which it was detailed by the Court that a proprietor of a trademark does not need to actually use their mark to establish a likelihood of confusion, and instead the Court must determine whether there is a likelihood of confusion on the basis of a notional and fair use of the mark by the proprietor.
As with the above point, the Court considered that the dominant aspect of the Combination Sign was the use of the word BENTLEY. Therefore, even in the absence of any evidence of actual confusion, the Court was able to reach the verdict that use of the word BENTLEY in the combination sign on any clothing was likely to cause confusion for the average consumer, assuming a notional and fair use of the mark by the claimant.
The defences of Bentley Motors
BM advanced two defences in this case:
That the 1994 Trade Marks Act specifies that any use of a mark prior to the 1994 Act which was not deemed to be infringing an existing mark prior to the 1994 Act could not be deemed to be infringing that same mark after the 1994 Act came into force. This was intended to ensure the continued use of any marks which were not infringing after the introduction of new legislation; and in the alternative
That there had been an honest, concurrent use of the BENTLEY mark by BM.
To take each of these in turn:
The Court took the opportunity to limit the effect of certain provisions of the 1994 Act. BM argued that since they had a right to use the word Bentley on certain specified clothing prior to the 1994 Act they should be allowed to continue to produce clothing. BM also argued that they should be allowed to vary their use of the mark. The Court looked unfavourably on this argument and stated that ‘It would permit uses of the sign which the defendant had not even contemplated before the 1994 Act came into force.’ The transitional provisions were only intended to allow parties to continue any existing use, but not any variation or branching out of that use. However, BM could continue to sell any clothing they sold prior to the commencement of the 1994 Act, but this was a very limited range: jackets, ties, caps and scarves.
7 of the 1994 Act allows parties to raise the defence of honest concurrent use, a defence which was also raised in Budĕjovický Budvar, národní podnik v Anheuser-Busch Inc (C-482/09), and therefore approved as a valid defence by the CJEU. The judgment essentially states that if there has been an honest and concurrent use of a mark, such that continued use of the mark would not have, nor would it be liable to have, an adverse effect on the original trade mark, then that is a defence to trademark infringement. The Court found that from the discussions between the parties in 1998, there can be no doubt that BM was aware of Bentley Clothing and their related trademarks. Following these discussions, the Court considered that there had been a shift in BM’s use of the mark BENTLEY, which resulting in a slowly increasing use of the word BENTLEY both on its own on various items of clothing, and also increasingly used below the winged-B. The Court therefore found that there had been ‘a conscious decision to develop the use of BENTLEY in relation to BM’s range of clothing and headgear such as to increase the prominence of that sign, but only in incremental stages in the hope that no one stage would provoke a reaction from Bentley Clothing.’ The Court therefore declared that this use was not honest, but was an attempt to increase the goodwill associated with the car manufacturer relating to clothing items in an attempt to circumvent the trademarks of Bentley Clothing.
Although the law was clearly in favour of the claimant in this case, BM advanced a case which was, at least in part, based upon their prominent and recognisable brand. The case detailed by BM suggests that they believed their use of the BENTLEY mark over a sustained period and in conjunction with their famous winged-B design would be enough to establish a legitimate use of the BENTLEY mark on their clothing items. However, the Court clearly established that the law is there to protect the proprietors of registered trademarks no matter their size or branding power.
There are two main takeaways from this case:
The Court’s decision on what the BM brand was. BM had no success arguing the logo and word constituted one sign. The Court clearly found that written word mark subsisted in its own right (as it usually will online), and was therefore protected enough in its own right.
The case provides useful guidance on honest concurrent use. The Court felt BM had acted without honesty. BM had made efforts to use an incremental approach to increase their use of the infringing mark in the hope that Bentley Clothing would not react. The Court was quick to state that this approach will not work as it will destroy the essential ‘honesty’ element of honest, concurrent use.
Case reference: Bentley 1962 Ltd & Anor v Bentley Motors Ltd  EWHC 2925 (Ch) (01 November 2019)
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