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Never Too Late: if you missed the IPKat last week

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Patents, copyright, event reports, defamation, IP Education Series… you say it, we’ve got it! The roundup of the variety of news that the IPKat covered last week has arrived… because it really is Never Too Late!

Patents

The recent update by the UKIPO of its Formalities Manual added that an AI inventor is not acceptable as it does not identify "a person" as required by law. In light of this, GuestKat Frantzeska Papadopoulou examines patent applications made by AI Inventor 'DABUS', and asks us to query the implications of this current view of excluding inventions created by AI.

German ratification of the Unitary Patent Court has been a long pending process, awaiting the outcome of a complaint in the German Constitutional Court. It has been suggested that Brexit has played a role in this. However, as GuestKat Rose Hughes reports, according to the judge overseeing the German constitutional complaint to the UPC (Justice Huber), these allegations may be bulls***.

In this guest report from Rien Broekstra and Gaëlle Béquet of Brinkhof (Amsterdam) (who represent Wiko in the parallel Dutch litigation), they detail the latest development in the ongoing FRAND wars, this time from Germany, concerning the requirements for a FRAND offer.

Typically, in disputes of insufficiency before the EPO, the burden of proof is initially on the side of the party alleging that the patent or application is insufficient. However, as GuestKat Rose Hughes notes, a recent Board of Appeal decision (T 1299/15) confirms it is possible for the burden of proof to shift back to the patentee if "serious doubts" exist.

Kat Eleonora Rosati reports on the CJEU judgment in Spedidam v INA, which followed up on Soulier and Doke and ruled that a presumption of consent of performers in relation to exploitation of recordings is not necessarily contrary to EU law.

Katfriend Bohdan Widła (Barta & Kalinski sp.j. and Jagiellonian University) provides an update on recent developments in Poland concerning damages for copyright infringement, and how much can be claimed.

Trade Marks

Katfriend Penelope Ng brings us a summary of a recent trade mark case in Singapore - Dentsply Sirony Inc. v Tomy Incorporated [2019] SGIPOS 13 - in which bad faith was successfully claimed.

GuestKat Nedim Malovic looks at the intriguing judgment of the EU General Court in T-149/19, which excluded likelihood of confusion between marks representing stylised human figures despite sharing the same public, considering the latter's average level of attention and the average degree of conceptual similarity between the signs.

Geographical Indications

GuestKat Peter Ling reports on a decision by the Higher Regional Court of Hamburg, which found that use of "Glen" in "Glen Els" constituted both an "evocation" of the protected denomination "Scottish Whisky" and a "misleading indication".

Events

Looking to catch up with the latest fashion (law) trends? Kat Eleonora Rosati informed us of the next event 'Fashion Law London - The Spring/Summer Collection', to be held in London on Friday 28 February 2020. IPKat readers enjoy a discount in the registration fee as well!

Katfriend Amy Crouch (Simmons & Simmons, London) provided the first report on the 63rd UIC John Marshall Law School Annual IP Conference, on the topic of "Antitrust & IP: Does it need to be retooled?"Amy also reported on "The State of Patent Law & Policy: Views from the Top" session in her second report from the JMLS IP Conference.

In light of all of the political drama within the UK concerning the NHS, AmeriKat Annsley informed us of the UCL IBIL Innovation debate which took place a few days ago (chaired by Mr Justice Birss) where experts who understand the patent system, innovator and generic business models, drug pricing, cost of drug discovery and public health systems, explored some of the issues faced.

Defamation

GuestKat Léon Dijkman looks at an interesting decision from the Amsterdam district court which ordered Google to remove negative reviews from Google Maps's review section after concluding that they were fake.

Economics and IP

Former PermaKat Nicola Searle shares her thoughts on the current state of the impact of economics on IP, and as a bonus asks for feedback from Kat readers.

IP Education

The IP Education Series is back! In this week's instalment, Dr Janice Denoncourt discusses Generation Z, IP Education and the United Nations 2030 Agenda for Sustainable Development Goals - in particular Goal 9: to build resilient infrastructure, promote sustainable industrialisation and foster innovation.

Never Too Late 241 [Week ending 17 Nov] It may be the name of a fashion style, but is it trade mark use? | Bentley Motors found you have infringed small clothing firm’s ‘Bentley’ trade marks | Monday Miscellany | “Weel done, Cutty-Sark”--from poem to sailing ship to whisky: What’s in a name? | IPEC no longer London-focuses as IP small claims track reaches courts in Newcastle, Manchester, Cardiff and beyond | Can an employee’s freedom of expression trump their confidentiality obligations? The ECtHR weighs in (in a case concerning an employee’s personal website) | Around the IP Blogs | Wednesday Whimsies | Ferrero succeeds in enforcing is rights in the Tic Tac container before Italian court | Never Too Late: If You Missed the IPKat | In order to be irreplaceable, one must always be different: Chanel in trade mark dispute over GABRIELLE mark - again | [Guest post] Rome court rules that iconic photograph of judges Falcone and Borsellino is not a photographic artwork

Never Too Late 240 [Week ending 10 Nov] The Fruits of the Forbidden Tree - AG Opinion C-176/18 on the Boundaries of Plant Variety Rights | Book Review: Internet intermediaries and trade mark rights | case number and official translation of recent Swedish copyright referral now available | [Guest post] Event report: #FashionLawLDN - The Autumn Winter Review | Around the IP Blogs | Book Review: Global Genes, Local Concerns | BREAKING: Board of Appeal provides some initial thoughts on the Broad Institute’s CRISPR appeal (T0844/18) | ‘Competition Law in the Pharmaceutical Sector’ returns to Brussels with IPKat discount code | Thursday Thingies | OxFirst’s 4th Symposium on IP and Competition shows the need to conceptualize FRAND internationally | Sublicensing considerations in software contracts | Discussion point: Does processing of SaaS login credentials make you a data controller? | Never Too Late: if you missed the IPKat last week | BREAKING: High Court of England and Wales weighs in on communication to the public and linking | A case for our times: Ambiguity, insufficiency and uncertainty (Anan Kasei v Neo [2019] EWCA Civ 1646) | What was the relevant undertaking? Further comments on Unilever v Shanks [2019] UKSC 45 | Benelux Court of Justice rules on well-known trade mark in a work of art | Michael Palmedo named Shamnad Basheer IP/Trade Fellow | China introduces new regulation tackling bad faith trade marks… and who is Jing Hanqing? | No economic links, no exhaustion of the “Schweppes” mark in Spain | Rolling to a stop - Jaguar Land Rover shape trade mark rejected, this time by the UKIPO | [Guest Post] Novelty of Cripps Pink Apples under Council Regulation on Community Plant Variety Rights | Conference Report: “Artificial Intelligence: Challenges for Intellectual Property Law” | Airbnb rentals and communication to the public: do you need a specific licence for your TV/radio sets? | Book launch: “The Confusion Test in European Trade Mark Law” | Call to readers: let’s talk about patent quality | Can the UK become and stay a member of the UPC? | Feilin v. Baidu: Beijing Internet Court tackles protection of AI/software-generated work and holds that copyright only vests in works by human authors

Never Too Late: if you missed the IPKat last week

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Have you been keeping on top of IPKat news? In this week's edition of Never Too Late, we catch you up on a week dominated by trade mark reports, as well as other IP updates - shall we get started?

Monday, Monday... No time to sleep on a Monday

In this guest contribution, Ilaria Gargiulo (DGRS Studio Legal) discusses a recent decision of an Italian court, illustrating that, even for iconic photographs, fulfilling the originality requirement for copyright protection is not necessarily a given.

Patents

Kat Annsley Merelle Ward reports on the recent announcement that IPEC claims can now be issued and heard outside of London, as the IP small claims track reaches courts in Newcastle, Manchester, Cardiff and beyond.

Trade Marks

Katfriend Tyrone Berger reports on a recent case addressing the ever-vexing question of when use amounts to trade mark use in Australia. In Pinnacle Runway Pty Ltd v Triangl Ltd, the Australian Federal Court found that the name given to a style of bikini will not amount to ‘use as a trade mark’ so as to constitute trade mark use.

InternKat Riana Harvey examines a recent High Court of England and Wales ruling, in which it was found that Bentley Motors had infringed a small family-run clothing firm’s ‘Bentley’ trade marks through the use of its ‘Combination Sign’.

In “Weel done, Cutty-Sark” - - from poem to sailing ship to whisky: What’s in a name?, Kat Neil Wilkof recalls the singular journey of the term “cutty sark”, which ultimately became the name of a brand of popular Scottish whiskey.

GuestKat Nedim Malovic reports on a decision of the Turin Court of First Instance, where Ferrero succeeded in defending its trade mark registrations for its 3D Tic Tac container.

When it comes to trade marks, in order to be irreplaceable, one must always be different - this is what Katfriend John Shaw sets out in his analysis of the latest trade mark dispute between Chanel and Catherine Sidonio.

Freedom of expression and confidentiality

Kat Eleonora Rosati looks at the intriguing case of Herbay v Hungary, Appl. No. 11608/15, which discussed Article 10 of the European Convention of Human Rights, and how contractual restrictions on employees' free speech may be overcome by overriding fundamental rights considerations.

Never Too Late 239 [Week ending 27 October] Guest Post: Martin v Kogan: Court of Appeal clarifies joint authorship test | BREAKING: UKSC finds Unilever is not too big to pay - Shanks v Unilever [2019] UKSC 45 | Around the IP Blogs | General Court says that relevant public's attention is 'average at best' when assessing likelihood of confusion relating to games and computer games (so that DUNGEONS is confusingly similar to DUNGEONS AND DRAGONS) | [Guest Post] IP Education Series #2 | [Guest Post] Retromark Volume VI: the last six months in trade marks | The African Regional Intellectual Property Organisation (ARIPO) Model Law on Copyright and Related Rights | A twist (with apologies to Chubby Checker) in the music business when public transportation is involved | General Court confirms cancellation of EU trade mark consisting of the shape of famous Rubik's Cube | How and where may implementers sue for FRAND-licences? | Event report: Tertulia on EUIPO Boards of Appeal Case Law | Book Review: Translation Accuracy and Dissemination of Disclosure of Patent Information: An Analysis of Translation and its Influence on Patent Law | Never Too Late | AG Kokott provides insights on distinctive character of geogaphical collective trade marks and their interplay with GIs

Ferrero succeeds in enforcing its rights in the Tic Tac container before Italian court

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It was just a few months ago that the Court of Justice of the European Union (CJEU) (BMB v Ferrero, C‑693/17 P) sided with well-known foodstuffs manufacturer Ferrero by upholding the invalidity of a registered Community design right for comfit boxes and containers pursuant to Article 25(1)(e) of Regulation No 6/2002. This was due to a conflict with Ferrero’s international trade mark (below) representing the container of its Tic Tac comfits.

Now the latest news is that Ferrero has succeeded in defending the trade mark registrations for its Tic Tac container in the context of infringement proceedings brought in Italy.

Yesterday, the Turin Court of First Instance ruled in fact that the maker of look-alike comfit containers had infringed Ferrero’s Italian trade marks (sentenza 5140/2019).

Background

The claimant, Ferrero, is a well-known manufacturer of foodstuffs, including comfits marketed as Tic Tac. Tic Tac comfits are sold in transparent plastic containers like the one represented below:

Among other things, in 1973 Ferrero obtained two Italian 3D trade mark registrations for said container. In 1974, it obtained the corresponding international trade mark registration for one of these trade marks (which it had relied upon in the design case mentioned in the opening).

In 2017, Ferrero started proceedings for trade mark infringement and unfair competition against Mocca, a Czech manufacturer of comfits sold under the name Bliki which, as found by the Italian court,

not only do have the same shape and size of Ferrero’s [Tic Tac comfits], but are also packaged in containers that are substantially identical to those subject to the Tic Tact trade marks and, as a result, are an infringement thereof.

The decision

In establishing trade mark infringement, the Turin court noted that the defendant’s containers had the same “shape, size and opening mechanism of the packaging (a rectangle within the packaging with a white externally protruding border); transparency of the container; positioning of the label in the upper part of the packaging; an elongated oval shape of the comfits visible within the transparent box.”

A comparison between Tic Tac and Bliki containers can be found below:

The court also found that the defendant’s activities amounted to unfair competition pursuant to:

Article 2598, No 1, of the Italian Civil Code (slavish imitation which, to be established, does not require to be also likely to cause confusion);
Article 2598, No 2 (misappropriation of qualities); and
Article 2598, No 3 (free riding on the coat-tails of Ferrero).

The defendant had argued, inter alia, that: (1) an Italian court could have no jurisdiction in that the comfits were produced in the Czech Republic (however, as the court noted, sales had also taken place in Italy); (2) Ferrero’s trade marks would be invalid in that they are technical shapes and/or shapes that give a substantial value to the goods; and, even if they were considered valid, (3) no likelihood of confusion could be established due to the fact that the containers would carry different word marks and the shape of the Tic Tac comfits is a standard one in the reference sector.

Jurisdiction of Italian courts

With regard to the point concerning alleged lack of jurisdiction of Italian courts, the court noted that the claimant was enforcing two Italian trade marks, so that the applicable jurisdiction rule would be that in Article 120(1) of the Italian Industrial Property Code (in line with what is stated in Article 7(2) of the Brussels I Regulation recast, as interpreted by the CJEU in eDate and Wintersteiger), which sets forth the competence of Italian courts in proceedings concerning infringement of Italian IPRs, irrespective of the nationality, domicile or residence of the parties.

Validity and infringement of the trade marks

The court noted that the circumstance that different word marks would be present on the Tic Tac and Bliki containers is irrelevant, since what was at issue in the present case was the protection of 3D trade marks.

The court rejected the claim that Ferrero’s trade mark would be invalid, also noting that nothing prevents an object from being protected by different IPRs. In line with the CJEU Lego Juris decision, the court recalled that “the prohibition on registration as a trade mark of any sign consisting of the shape of goods which is necessary to obtain a technical result ensures that undertakings may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions.” This was found not to be the case here.

The court also excluded that the Tic Tac container would consist exclusively of a shape that gives a substantial value to the goods, in that the defendant did not prove that consumers’ purchasing decisions would be influenced by the appearance of the shape. In addition, the court recalled the CJEU decision in Henkel to point out that the container of Tic Tac comfits is not the shape of the product.

In sum, the court ruled that the claimant's trade mark were valid and infringed.

Around the IP Blogs

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For anyone is reading this blog who is a fan of IP issues, this Kat delicately selected some interesting posts from other blogs to offer more information.

You want to know what happened around the
IP blogosphere recently? Well, let me begin...

Patents

Kluwer Patent blog reported on Ingve Björn Stjerna’s article on the issue of the compatibility of the Unified Patent Court Agreement (UPCA) and two pieces of draft legislation submitted for its ratification in Germany with the German constitution. He is the lawyer behind the constitutional complaint against the UPCA which led to a stay of ratification proceedings in Germany.

EPlaw Patent Blog reported on the decision of the Court of Appeal in UK in Anan Kasei Co. Ltd & Rhodia Operations S.A.S. v Neo Chemicals and Oxides Limited & Neo Performance Materials Inc. This case relates to the sufficiency of European Patent (UK) No. 1 435 338 (the “Patent”). In the decision, Lord Justice Floyd provided further guidance on the law of sufficiency, in particular insufficiency due to ambiguity (or uncertainty) and excessive claim breadth.

The release of an in-depth analysis paper ‘EU Patent and Brexit’ (requested by the JURI committee) in the EU was perhaps the most covered news of the last week - this was covered by the IPKat (here), but you can find other articles on the topic from the Kluwer Patent Blog and EPLaw, as well as the paper itself here.

IPWatchdog also looks at the recently released EPO study on SMEs and their pursuit of patent filings.

Kluwer Copyright Blog continued with Part II of its analysis of Article 17 of the EU DSM Directive and the copyright limitations - this time examining the availability of limitations under Art 17(7) and the complaint and redress mechanism under Art 17(9). You can also find Part I of the series here.

The Kluwer Copyright Blog also presents Part I of a two-part series looking at the CJEU case of Pelham v Hütter and Schneider-Esleben, beginning with an examination of the sampling-specific implications of the ruling, as well as the understanding of the notion of a ‘copy’ under the Rental and Lending Rights Directive.

In the US, the CASE Act (Copyright Alternative in Small-Claims Enforcement) has split opinions as to its usefulness and effectiveness. IPWatchdog interestingly presents two articles, one in favour of the CASE Act and the other alleging the CASE Act is bad policy despite its good intentions.

Trade Marks

Florica Rus and Verena von Bomhard, in the Kluwer Trademark blog, summarised and commented on several recent cases concerning the issue of bad faith in trade mark law by the General Court and the Court of Justice of the European Union. They detected that the assessment of bad faith seems to have become stricter, focusing more on balancing the interests of the trade mark owner and the competition in the market.

Other

In SpicyIP Blog, Balu Nair reported on the decision by Justice Prathiba M Singh of the Delhi High Court in Baba Ramdev case, wherein the Court issued an interim injunction directing Google, Facebook, YouTube, Twitter and other unnamed intermediaries to take down on a global basis, defamatory content uploaded on their platforms against Baba Ramdev.

In the IP Finance blog, it is reported that the National Collegiate Athletics Association, an organisation which essentially regulates collegiate athletics in the United States, has voted to begin the process of allowing student athletes to profit from the use of their name, image and likeness.

Bentley Motors found to have infringed small clothing firm’s ‘Bentley’ trade marks

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Bentley Motors' 'Combination Sign'

Can a small family-run company win in a battle of trade marks against a world renowned luxury car manufacturer such as Bentley Motors? The answer is 'yes', according to the ruling passed down at the beginning of November by His Honour Judge Hacon (sitting as a Deputy High Court Judge) in Bentley 1962 Limited and Brandlogic Limited v Bentley Motors Limited [2019] EWHC 2925 (Ch).

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.

Three UK trade marks were relied upon by Bentley Clothing (pictured). Bentley Clothing objected to the use of Bentley Motors’ ‘Combination Sign’, composed of a ‘B-in-Wings’ device and the word ‘BENTLEY’. It was emphasised that Bentley Clothing only objected to its use in relation to clothing and headgear.

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.

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...).