In a recent decision, the High Court has held that the Cheshire based car company Bentley Motors infringed the trademark rights of Manchester based clothing company Bentley Clothing. This was because Bentley Motors had used the Bentley name on its own range of clothing goods.
Background
Bentley Clothing hold three UK registered trademarks which are set out in the table below. Bentley Clothing, and their predecessors, had been in business since 1962. The table below shows that Bentley Clothing had the benefit of registered trademarks since August 1982.
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Number
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Mark
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Goods
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Filing Date
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1180215
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 |
Class 25:
Articles of knitted clothing; shirts and waistcoats
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12 August 1982
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|
2177779A
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Series Mark:
BENTLEY
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Class 25:
Clothing; headgear; articles of knitted clothing, knitwear, jumpers, pullovers, cardigans, sweaters, shirts, sweatshirts, T-shirts, polo shirts, coats, jackets, top coats, overcoats, raincoats, car coats, waistcoats, blousons, articles of clothing for casual wear, shorts, articles of sports clothing, blouses, hats, caps, scarves, gloves, anoraks
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22 September 1998
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2505233
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BENTLEY
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Class 25:
Clothing and headgear
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22 December 2008
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Bentley Motors, the well-known luxury car manufacturer, branched out into the sale of clothing and headgear in about 1987. The logo which Bentley Motors used on its clothing and headgear was:
In 1998, Bentley Clothing objected to Bentley Motors using this logo on its clothing and headgear. Correspondence passed between the parties until 2015, at which point Court proceedings were commenced in both the UK and EU Intellectual Property Offices and the High Court.
The principle issue that the Court had to decide was whether Bentley Motors had infringed any of Bentley Clothing’s trademarks pursuant to sections 10(1) or 10(2) of the Trade Marks Act 1994 (TMA 1994) because of its use of the logo above between November 2011 and November 2017.
Section 10(1) of the TMA 1994 says that trademark infringement occurs when a sign used by an infringer is identical to a registered trademark and is used in relation to goods or services which are identical to those for which the trademark is registered.
Section 10(2) of the TMA 1994 says that trademark infringement occurs where:
- A sign used by the infringer is identical to the registered trademark and used in relation to goods or services which are similar to those for which the trademark is registered; or
- The sign used is similar to the registered trademark and used in relation to goods or services which are identical or similar to those for which the trademark is registered;
And, in each case, there exists a likelihood of confusion or association on the part of the public.
The Court’s Decision
The Court held that Bentley Motors’ logo (as displayed above) did infringe Bentley Clothing’s trademarks pursuant to sections 10(1) and 10(2) of the TMA 1994. In reaching this conclusion, His Honour Judge Hacon, a leading intellectual property Judge, held that:
- The consideration by the UK Intellectual Property Office of an invalidity action in respect of Bentley Clothing’s trademark number 2505233 did not result in any finding which prevented Bentley Clothing from bringing trademark infringement proceedings in the High Court.
- Bentley Motor’s logo did amount to use of Bentley Clothing’s sign BENTLEY and therefore infringement pursuant to section 10(1) of the TMA 1994 was made out.
- Furthermore, there was a likelihood of confusion between Bentley Motors’ logo and Bentley Clothing’s registered trademarks which meant that trademark infringement pursuant to section 10(2) of the TMA 1994 was also made out.
- Prior to the TMA 1994 coming into force, Bentley Motors had sold jackets, silk ties, caps and scarves using the branding “The Bentley Selection”. The only trademark that Bentley Clothing had registered by 1994 related to knitted clothing, shirts and waistcoats. The Judge therefore held that Bentley Motors has a continuing right to sell garments of the type sold before November 1994 under the banner “The Bentley Selection”. However, this did not entitle Bentley Motors to continue the sale of other types of clothing or headgear.
- The defence of honest concurrent use was unavailable to Bentley Motors because the facts indicated Bentley Motors had engaged in a policy of “grandmother’s footsteps” by making a conscious decision to develop the use of BENTLEY in relation to its clothing and headgear in order to increase the prominence of that sign but in such a way to try and avoid provoking a reaction from Bentley Clothing.
Conclusion
Bentley Motors have indicated that they might appeal the High Court’s decision. However, as it stands, this case shows that registering trademarks can protect even the smallest of brands against large multi-national businesses. It also serves as a reminder that businesses looking to branch out into new areas need to carry out proper searches to check that their branding does not conflict with the intellectual property rights of other parties.
Our specialist intellectual property disputes team routinely advises on a broad range of disputes involving trademarks along with other intellectual property disputes relating to copyright, patents, confidential information and data protection. The team is also highly skilled at advising on design rights and reputation management issues and are regularly instructed by clients from the arts, media, textile and clothing sectors in the UK and internationally. If you need advice on trademark or other intellectual property infringements, please do not hesitate to contact a member of the team today.