Bentley Motors and Bentley Clothing have been engaged in a long running legal dispute as to the respective rights in the brand ‘Bentley’ for clothing and such like. This culminated in Bentley Clothing suing Bentley Motors for infringement of its trade mark registrations.
The matter of Bentley Motors’ infringement of Bentley Clothing’s trade mark registrations was litigated in the High Court, and more recently in the Court of Appeal. The appeal decision was handed down on 16 December 2020.
Bentley Clothing is a British fashion brand and the successor to a line of clothing businesses, of which the first was founded in 1962. Bentley Clothing possesses three ‘Bentley’ trade marks, the earliest of which dates from 1982.
Details of its trade marks are given in the table below:
Articles of knitted clothing; shirts and waistcoats
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
Clothing and headgear
Bentley Motors is the well-known car manufacturer. It was accused of trade mark infringement by Bentley Clothing on account of its use of the brand Bentley in relation to clothing, footwear and head gear.
Over the years, it had steadily expanded its use of ‘Bentley’ in varying forms in relation to clothing and suchlike. This included use of The Bentley and B in Wings device, listed below.
One sign or two?
The question of whether Bentley Motors’ use of ‘The Bentley and B in Wings device’ counted as use of one trade mark or of two separate marks (one being the word Bentley, and the other being the B in wings device) was an important one for the courts.
If Bentley Motors’ use was held to be use of a single trade mark, as it claimed, then the correct grounds for infringement would be under Section 10(2) of the Trade Marks Act 1994 (use of a similar trade mark for identical goods), in which case the onus would have been on Bentley Clothing to show that there was a likelihood of confusion.
Alternatively, if the use was held to be of two separate marks, Bentley Motors would have used the word Bentley alone, which is identical to the earlier rights of Bentley Clothing. Accordingly, its the claim would fall under Section(10)(1), Trade Marks Act 1994 (use of an identical trade mark for identical goods), which did not require Bentley Clothing to show a likelihood of confusion, thereby making it easier to prove trade mark infringement.
HHJ Hacon in the High Court proceedings had concluded that the use had been of two separate marks.
This was upheld by Lord Justice Arnold on appeal. Notwithstanding the fact that Bentley Motors had more recently made efforts to combine the two brands, he concluded that because there was extensive historic use of the signs as separate brands, the relevant public would perceive the signs as being distinct from one another.
There was therefore double identity infringement under Section(10)(1), Trade Marks Act 1994, subject to the defence of honest concurrent use and a defence under the transitional provisions of the Trade Marks Act 1994.
Bentley Motors’ Defence
Honest concurrent use
In both the trial at first instance and on appeal, Bentley Motors claimed a defence of honest concurrent use.
Honest concurrent use as a defence has its basis in case law, not in statute. It acts as a defence to infringement in cases where two separate entities have been honestly using the same or a similar brand, and have co-existed for a long-time.
However, if the allegedly infringing party is shown to have deliberately encroached on the other party’s goodwill in its brand, or otherwise deliberately acted to increase the likelihood of customer confusion, the defence is liable to fail.
In the first instance judgement, it was held that Bentley Motors had engaged in a policy of ”grandmother’s footsteps” towards Bentley Clothing. It was held to have incrementally expanded its use of ‘Bentley’ in a fashion designed to avoid any one step provoking a reaction from Bentley Clothing, with the ultimate aim being to extinguish the latter party’s rights in ‘Bentley’ altogether. Therefore, on appeal this defence failed.
Evidence that worked against Bentley Motors’ claim of honest concurrent use included the following:
- Bentley Motors first sold clothing in 1987. The clothing line was advertised in a catalogue under the title ‘The Bentley Selection’, however, ‘Bentley’ was not applied to the goods themselves.
- Bentley Clothing first approached Bentley Motors in 1998, putting Bentley Motors on notice as to its rights in ‘Bentley’ for clothing and related goods.
- In the year 2000, Bentley Motors began using the words TEAM BENTLEY and the B in wings device on clothing.
- In 2002 Bentley Motors started using the word ‘Bentley’ below the B in wings device on clothing.
- At around the same time Bentley Motors produced a beanie hat and scarf bearing the word ‘Bentley’ alone.
- Bentley Motors had made attempts to extinguish Bentley Clothing’s registered Trade Marks.
The transitional provisions of the Trade Marks Act 1994
On 31 October 1994, the Trade Marks Act came into force, repealing the 1938 Act. The new act expanded the rights of trade mark proprietors to bring infringement actions. Prior to the new act trade mark owners could not bring an infringement action in relation to goods or services for which their trade mark was not registered.
In order to lessen disruption to the trade of existing legitimate businesses, the new act contains transitional provisions to allow trade mark use to continue when the new law came into force where it had been legal under the old law.
The specific provisions are found under Schedule 3, Paragraph 4(2)(b), Trade Marks Act 1994 and are as follows:
“(2) It is not an infringement of …
(b) a registered trade mark of which the distinctive elements are the same or substantially the same as those of an existing registered mark and which is registered for the same goods or services, to continue after commencement any use which did not amount to infringement of the existing registered mark under the old law.“
The current set of cases raised interesting questions as to the interpretation of the above transitional provisions.
Up to October 1994 Bentley Motors was selling jackets, silk ties, caps and scarves. As previously stated, these goods were advertised in a catalogue under the title ‘The Bentley Collection’, and there was no evidence that the mark ‘Bentley’ was applied to the goods themselves.
Prior to the entry into force of the new act, the only trade mark possessed by Bentley Clothing was UK Trade Mark Registration No 1180215 for ‘knitted clothing; shirts and waistcoats’. As Bentley Motors did not sell goods identical to these, there was no infringement of Bentley Clothing’s trade mark at that point.
Problems arose for Bentley Motors’ once the Trade Marks Act 1994 came into effect, and Bentley Clothing obtained its additional two trade mark registrations which did cover the goods being used by it.
In the High Court proceedings, Bentley Motors contended that as Bentley Clothing’s trade marks all shared the dominant and distinctive word ‘Bentley’, it had a defence to infringement of Bentley Clothing’s trade marks under the transitional provisions, in relation to all the use of ‘Bentley’ which it had been making.
The main question for the court to consider was how broadly the transitional provisions were to be interpreted, in particular the wording ‘“to continue after commencement any use which did not amount to infringement … under the old law”‘. For example, was it allowable for Bentley Motors’ to vary the way in which it used the sign ‘Bentley’ and apply it to goods it was not already in use for once the Act came into effect. Alternatively, was the intention of Parliament in drafting the legislation to preserve the status quo, in which case Bentley Motors would only be able to claim a defence under the transitional provisions in relation to the use it was making prior to the Trade Marks Act 1994 coming into force. Any expanded use of ‘Bentley’ would therefore be infringing use.
HHJ Hacon concluded that Bentley Motors’ interpretation of these provisions was overly broad, and that it would not have been Parliament’s intention to to allow parties to claim a defence under the transitional provisions, while branching out to use new signs which ‘the defendant had not even contemplated before the 1994 Act came into force’. In essence, it was held that the provisions were designed to allow parties to continue on as before, not to allow them to expand their use in new directions.
On appeal, Bentley Motors sought a wider interpretation of the provisions so that its defence would extend to ‘(a) a wider range of clothing (save for articles of knitted clothing, shirts and waistcoats) and (b) any use of the word BENTLEY in relation to such goods’. Bentley Motors was requesting the court to make a more general interpretation of the legislation. Bentley Motors further argued that it had a legitimate expectation to continue the use it had been making of the sign.
Lord Justice Arnold ultimately rejected Bentley Motors’ arguments, on the basis that they were ‘result-oriented’. He specifically stated ‘why should Bentley Motors be entitled to continue to use the sign in relation to a particular kind of clothing just because, many years later, its use of the sign in relation to that kind of clothing has been held to be an infringement subject to the defence under Schedule 3 paragraph 4‘.‘
- Registered trade marks are powerful rights and if properly in place can be used to defeat legal challenges brought by more powerful parties.
- It is important where possible to obtain a trade mark registration which covers your actual and intended commercial use as early as possible. Bentley Motors might have been in a stronger position if it had applied to register its Bentley and B in Wings device as a trade mark for clothing and related goods, prior to Bentley Clothing obtaining its first trade mark registration.
- If two parties using the same or a similar brand have been co-existing for a long time, any attempt to encroach on the goodwill of the other party, whether sudden or gradual, is likely to undermine any future honest concurrent use defence.
- When seeking a correct interpretation of legislation, the intention of Parliament in enacting it should be considered.