Bentley Motors found to have infringed small clothing firm’s ‘Bentley’ trade marks
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| Bentley Motors' 'Combination Sign' |
In this case, Bentley Motors was found to have infringed the claimants’ ‘Bentley’ trade mark by use of Bentley Motors’ ‘Combination Sign’ (pictured on the right hand side) on their clothing and headgear.
Background
The claimants in the case were Brandlogic, a family firm which sold clothing under the brand ‘Bentley’, as well as Bentley 1962 Ltd, which held the IP rights it claimed to license exclusively to Brandlogic (the two referred to collectively in proceedings as ‘Bentley Clothing’). The Bentley clothing business had been acquired from a line of predecessors - the original business beginning in 1962 - with the business and associated trade marks (the oldest of which was registered in 1982) eventually being assigned to Bentley Clothing in 1998.
Sometime around 1987, Bentley Motors began selling a limited range of clothing, featuring the B-in-wings logo, but not ‘Bentley’. In 1998, Bentley Clothing made itself known to Bentley Motors, offering a licence to the car maker. However, sporadic discussions at various times after 1998 did not yield results. From 2000, Bentley Motors began to expand its clothing range and to use ‘Bentley’ (mainly as part of the ‘Combination Sign’) on the clothes.
From 2015 onwards, the parties became involved in various trade mark registry proceedings over ownership of the ‘BENTLEY’ mark for clothing and headgear in both the UK and the EU. After Bentley Motors failed to cancel all of Bentley Clothing's UK trade marks, Bentley Clothing started infringement proceedings.
From 2015 onwards, the parties became involved in various trade mark registry proceedings over ownership of the ‘BENTLEY’ mark for clothing and headgear in both the UK and the EU. After Bentley Motors failed to cancel all of Bentley Clothing's UK trade marks, Bentley Clothing started infringement proceedings.
The Combination Sign - one sign or two?
In order to establish infringement, it first had to be determined whether the Combination Sign was two signs used together (infringement under s10(1) of the Trade Marks Act (TMA) 1994, for use of identical signs for identical goods) or whether the sign was one sign (infringement under s10(2) TMA 1994, for use of a similar sign for identical goods).
After reviewing all of the evidence presented, Hacon J stated that the distinction between the Combination Sign being one or two signs did not matter to Bentley Motors until 2014, at which point Bentley Motors began emphasising in their company guidelines that the elements of the Combination Sign be used together ‘from now on’.
Hacon J pointed out the artificial quality of the question before the court. It was presumed that the hypothetical average consumer would consider this entirely unprompted when this would not normally be the case (a legal fiction).
The judge found that ‘BENTLEY’ and the ‘B-in-wings’ logo had been used separately for a long period of time, and would have been considered as two separate signs by the average consumer in the early 2000s. After 2014, whilst Bentley Motors’ licensees would have become aware that the Combination Sign was to be treated as one sign, this would not be the case for the average consumer. This was because the average consumer would have been familiar with the two marks separately, would not have known of Bentley’s new intention for the signs to always appear together, and would regard the‘BENTLEY’ name as a single distinct sign as it was and continued to be used extensively by itself.
Therefore, Hacon J found that, from 2014 to the present, the average consumer would perceive the Combination Sign as being two distinct signs used simultaneously, and - thus - an infringement under s10(1) TMA 1994.
Likelihood of confusion
Hacon J also addressed whether likelihood of confusion would arise if the Combination Sign was in fact to be treated as one sign. In addition to the normal factors to consider when determining if there was likelihood of confusion (global appreciation, assessment through the eyes of the reasonably well informed and circumspect average consumer, etc.), Hacon J drew particular attention to Maier v ASOS plc [2015] EWCA Civ 220 (see IPKat analysis here). In Maier, it was stated:
“[78] … the court must then consider a notional and fair use of that mark in relation to all of the goods or services in respect of which it is registered. Of course it may have become more distinctive as a result of the use which has been made of it… But…such use may have been on a small scale. In such a case, the proprietor is still entitled to protection against the use of a similar sign in relation to similar goods if the use is such as to give rise to a likelihood of confusion.” (emphasis added)
Based on the assumption that Bentley Clothing had made notional and fair use of its trade marks, and that the dominant component of the Combination Sign was the word BENTLEY (reinforced by any oral reference to the Combination Sign by the average consumer) there was a likelihood of confusion created between the two parties’ marks.
Transitional provisions of the 1994 Act
Despite a finding of infringement, this would be subject to the viability of the two defences raised by Bentley Motors, the first being that the 1994 Act set out provisions which apply to the use of signs that were lawful under the preceding Trade Marks Act 1938, but were no longer lawful under the 1994 Act.
Under Schedule 3 paragraph 4(2)(b) of the TMA 1994, it is set out that:
“(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 and services,
to continue after commencement any use which did not amount to infringement of the existing registered mark under the old law.”
Prior to the 1994 Act, Bentley Motors was selling jackets, silk ties, caps and scarves under the head: ‘The Bentley Selection’. The only trade mark that Bentley Clothing had registered by 1994 covered “knitted clothing, shirts and waistcoats”, and not the types of clothing sold by Bentley Motors prior to 1994. Thus it was found that Bentley Motors had a continuing right to sell garments of that type.
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| Smartly dressed Kat in clothing sans the 'Bentley' mark |
The judge considered whether the transitional provisions gave rise to a wider defence. Hacon HHJ set out that he did not believe that Parliament had intended for the defence provided to allow parties to carry on as they had prior to the 1994 Act, rather than allowing infringers to branch out into new uses of signs which since became the exclusive right of the trade mark proprietor. As such, this defence did not entitle Bentley Motors to continue the sale of other types of clothing or headgear, by using that sign on the goods themselves or on pages or other material attached to the goods.
Honest Concurrent Use
Section 7 of the TMA 1994 sets out the defence of honest concurrent use. It should be noted that it is not expressly covered by EU Trade Mark Directives. However, it has been identified as a defence in the CJEU case of Budĕjovický Budvar, národní podnik v Anheuser-Busch Inc (C-482/09).
Hacon HHJ drew on the summary of honest concurrent use from Victoria Plum Ltd v Victorian Plumbing [2016] EWHC 2911 (Ch) (see IPKat analysis here), which established that it would be possible for two separate entities to co-exist, such that the inevitable confusion that arises has to be tolerated. As such, a trade mark could indicate the goods or services of either of the entities without impairing the other’s use, but the defendant must not take steps which exacerbate the level of confusion beyond that which is inevitable, thus encroaching on the claimant’s goodwill.
Hacon J stated that it was possible for the status of a concurrent use of a trade mark (whether it was honest or not) could change over time. Ultimately, Hacon J determined the behaviour of Bentley Motors from 1998 (when it was first approached by Bentley Clothing) was one of “grandmother’s footsteps”:
“a conscious decision to develop the use of BENTLEY in relation to [Bentley Motors’] range of clothing and headgear such as to increase the prominence of that sign, but only in incremental stages in the hope that no one stage would provoke a reaction from Bentley Clothing”.
Bentley Motor’s behaviour - “consistent with an intent to clear away Bentley Clothing’s right to protect the BENTLEY mark” - rendered their behaviour to not longer be honest, and it was found that from the limitation date of the claim (November 2011), Bentley Motors was not entitled to the defence of honest concurrent use.
Comment
Despite the large amount of publicity that this case received for its somewhat ‘shocking’ outcome given the relative fame of the parties, on the basis of law the conclusion reached is not surprising, and indicates the strength of current trade mark protection, such that even a renowned car brand like Bentley Motors cannot win if the odds are against it.
But what will this decision mean in the long run? Bentley Motors has suggested that it may appeal. There is also the separate issue of damages - given how long proceedings have gone on between these two parties, it will be interesting to see what the actual amount will come to.
Out of curiosity, this InternKat looked to see if she could find clothing on the Bentley (Motors) website following this decision, but instead was greeted with a message informing that: “...there are no products in this collection”. It seems as through the consequences of this decision are already being felt (and that this InternKat will have to look elsewhere for Christmas ideas...).
