Bentley Motors (the famous luxury car company), has lost a long-running high court trade mark battle with a Manchester-based family-run clothing business, Bentley Clothing.
Bentley Clothing was established in 1962 . The issue in this case arose out of the clothing merchandise that Bentley Motors has then manufactured and sold since 1987.
The case deals with some very important points:
- How the UK Courts can find an “identical mark” even when two marks are used as “Combination Sign”;
- The defence of "Honest Concurrent Use"; and
- How the UK Courts deal with lengthy disputes that span the UK’s 1938 and 1994 Trade Marks Acts.
Up until October 1994, Bentley Motors sold jackets, silk ties, caps and scarves under a "The Bentley Selection" catalogue range.
Judge Hacon ruled that this was use of the sign BENTLEY in the course of trade in clothing. However, at that time Bentley Clothing only had its trade mark registered in respect of "knitted clothing, shirts and waistcoats". There was a lack of overlap under the 1938 Act. The transitional provisions from the 1938 to 1994 Acts applied and so use of “The Bentley Selection” for those specific goods was not an infringement under the current Act.
However, Bentley Motors had since 2000 used its “Combination Sign” on clothing at large, so a different mark and on a much broader range of goods.
Bentley Motors argued that its “Combination Sign” was one mark, in its entirety, and as such this meant that they could not be infringing Bentley Clothing’s earlier registration.
Judge Hacon found the Combination Sign was, in fact, two distinct signs and there was no reason that consumers would not perceive the Combination Sign as two familiar signs being used together. This use was an infringement under section 10(1) of the 1994 Act as one of its marks was identical to Bentley Clothing's trade mark BENTLEY. Here it seems Bentley Motor's own fame came back to bite it: BENTLEY is a famous mark and so the Combination Mark could be easily divided into two marks.
Bentley Motors was then also not able to rely on the defence of "honest concurrent use" in relation to its use of its “Combination Mark” : Judge Hacon held that Bentley Motors was aware of Bentley Clothing from 1998, and described Bentley Motor’s approach as a "policy of 'grandmother's footsteps' in relation to Bentley Clothing", in which Bentley Motors intended to gradually encroach on to Bentley Clothing.
Judge Hacon's decision restricts Bentley Motor's use of the word BENTLEY on those clothing goods to that which they used prior to 1994: jackets, silk ties, caps and scarves. They cannot use the word BENTLEY on any other clothing.
Judge Hacon's decision restricts Bentley Motor's use of the word BENTLEY on those clothing goods to that which they used prior to 1994: jackets, silk ties, caps and scarves.