iLuxury car manufacturer Bentley Motors has lost its appeal against a ruling which found it infringed the trade marks of a small, family company called Bentley Clothing.
Following the ruling, Bentley Motors must stop using the trade mark BENTLEY and their combination sign – the B-in-Wings logo and the word BENTLEY (shown below) – on clothing.
Background
Bentley Clothing was established in 1962, and filed three UK trade marks for BENTLEY in 1982, 1998 and 2008 in relation to its clothing, headgear and accessories (in class 25).
Up until 2000, Bentley Motors’ branding on its clothes had been limited to the famous B-in-Wings logo that features on the bonnet of Bentley cars (shown below). However, it then started distributing clothing catalogues using the “BENTLEY” trade mark alongside its wings logo.
The parties attempted to negotiate their overlapping trade marks, but discussions broke down. Bentley Motors then began trying to cancel Bentley Clothing’s trade mark rights at the UK Intellectual Property Office and Bentley Clothing issued trade mark infringement proceedings.
In November 2019, the High Court ruled that Bentley Motors had infringed Bentley Clothing’s trade marks. This ruling held that Bentley Motors could no longer use its name, by itself or combined with its distinctive B-in-wings logos, on its clothing range in the UK. Although there was an exception in relation to jackets, silk ties, caps, and scarves; Bentley Motors could not sell any other clothing or headgear.
Bentley Motors appealed the decision.
The Appeal Decision
The Court of Appeal upheld the High Court’s ruling unanimously, holding that there was “no basis” for it to overturn the lower court’s decision.
Bentley Motors and Bentley Clothing had sold simultaneously sold clothes for many years. However, Bentley Motors’ attempts to both revoke Bentley Clothing’s trade mark and develop a clothing line in direct competition with Bentley Clothing using an identical brand name would lead to confusion between the brands.
Observations
The decision marks the end of a long-running trade mark dispute involved between the two parties. The background of the parties is of particular note: Bentley Motors is a large multinational company; Bentley Clothing is a family owned business based in Manchester. However, Bentley Clothing ultimately prevailed in the dispute on the basis that it had registered its trade mark. This highlights how important it is for companies, no matter what their size or stage of establishment, to protect their brands and register trade marks early. It is important to note that early registration alone is not enough – to keep a trade mark a business must use it. Additionally, established brands should be wary of expanding their rights into new product categories without appropriate clearance searches.
Another interesting point to note is that the Court held Bentley Motors’ clothing line had encroached on the goodwill associated with Bentley Clothing. However, the average consumer is probably more likely to recognise the Bentley Motors business than the Bentley Clothing one, and associate the “Bentley” name with luxury cars as opposed to a local brand based in Manchester.
