A long-running High Court trade mark dispute (Bentley 1962 Limited, Brandlogic Limited v Bentley Motors Limited  EWHC 2925 (Ch)) could result in luxury car manufacturer Bentley Motors having to rethink its approach to branded clothing.
There were two claimants in this action. The first was Brandlogic, a family-run firm based in Manchester, which sells clothing under the brand ‘BENTLEY’. The second was Bentley 1962 Ltd, which has the same directors as Brandlogic and is the owner of intellectual property exclusively licensed to Brandlogic. The defendant was Bentley Motors.
The claimants’ clothing business started in 1962. In or around 1987, Bentley Motors started to sell a small range of clothing featuring the B-in-wings logo, but not the word ‘BENTLEY’. In 2000, Bentley Motors started to use the word ‘BENTLEY’ on its clothes.
The claimants commenced infringement proceedings following Bentley Motors’ refusal to cancel all of its clothing trade marks.
The High Court found that Bentley Motors had infringed the ‘BENTLEY’ word and figurative marks registered by the claimants when it used the ‘BENTLEY’ name and wings logo for clothing and headgear.
More specifically, the judge held that:
- the average consumer would see the name ‘BENTLEY’ and the wings logo as two distinct signs used together. Indeed, the average consumer would be familiar with the fact that they had been used separately for a long period of time and would not be aware of Bentley Motor’s plan (from 2014 onwards) to use them simultaneously. The use of ‘BENTLEY’, therefore, infringed the claimants’ marks under section 10(1) of the Trade Marks Act 1994 (TMA);
- if the analysis in the above paragraph was wrong and the claimants had made a notional and fair use of its trade marks, there was a likelihood of confusion between the two parties’ marks;
- pursuant to the transitional provisions under the TMA, the defendant would only be able to continue selling clothing under the combined name and wings marks that it had been selling before the TMA came into force;
- the defendant could not rely on the defence of honest concurrent use. This was because the defendant had deliberately decided to develop the use of ‘BENTLEY’ on its clothing and headgear in incremental steps so as to limit the chances of the claimant reacting to its use of the sign.