9 April 2020
Brands update - April 2020 – 3 of 8 Insights
Bentley Clothing is a clothing business based in Manchester and founded in 1962. The issue in this case arose out of the clothing merchandise that Bentley Motors (the famous luxury car company) has manufactured and sold increasingly since 1987.
The sign principally in issue was the sign above left which combines Bentley Motor's "B-in-Wings" device with the word BENTLEY below (the Combination Sign). Bentley Clothing objected to the use of the Combination Sign in relation to clothing and headgear on the basis of their registered trade mark for the word BENTLEY for those goods. Bentley Clothing did not object to the use of the "B-in-Wings" logo alone on clothing and headgear.
Bentley Motors argued that the Combination Sign was regarded as one mark in its entirety. This meant that they could not be infringing under section 10(1) of the UK Trade Marks Act 1994 (the Act), where the infringing sign has to be identical to the registered trade mark.
Conversely, Bentley Clothing argued that the word BENTLEY in the Combination Sign was to be regarded as a sign in its own right – ie that the Combination Sign was made up of two distinct signs.
Bentley Motors began using the two signs as the Combination Sign from 2014 onwards. Prior to this Bentley Motors used the two signs separately and extensively. Judge Hacon found that for this reason there was no reason that consumers would not perceive the Combination Sign as two familiar signs being used together. There was no reason to suppose that the average consumer would know anything about Bentley Motors' new intention to use the two signs together.
As Judge Hacon found that the Combination Sign was two distinct signs, he also found that the use was an infringement under section 10(1) of the Act as an identical mark to Bentley Clothing's trade mark BENTLEY.
Judge Hacon also said that had the Combination Sign been found as one sign, in his view there would still be infringement under section 10(2) of the Act, as there was likelihood of confusion between the marks. He found that the word element of the Combination Sign would be regarded as the dominant part if it was a combined trade mark, and therefore confusion was likely.
When the Act came into force, transitional provisions were included which apply to the use of signs which were lawful under the 1938 Trade Marks Act but would no longer be lawful under the 1994 Act. Bentley Motors argued that the use of the signs complained of was a continuation of use, a defence to infringement that was provided in the transitional provisions of the Act.
Up until October 1994 (when the 1994 Act came into force), Bentley Motors was selling jackets, silk ties, caps and scarves under the heading "The Bentley Selection" in a catalogue. 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 the sign above right registered in respect of "knitted clothing, shirts and waistcoats".
Given the lack of overlap between goods up to October 1994, Bentley Clothing did not contend that Bentley Motors was infringing the figurative mark above up to this date. As Bentley Motors were not infringing up to October 1994, Judge Hacon found that the transitional provisions applied, and that Bentley Motors were entitled to continue as they were prior to the act. As such, Bentley Motors can continue to sell jackets, silk ties, caps and scarves only. As they were only advertising under the BENTLEY sign – and the sign was not used on any of the items themselves – this remains the parameters of use.
This defence applies where two separate entities have co-existed for a long period, honestly using the same or closely similar names. The defendant in such scenarios must not take steps which exacerbate the level of confusion beyond that which is inevitable and so encroach upon the claimant's goodwill.
The evidence suggested that Bentley Motors had started using the Combination Sign from 2000 on clothing and most extensively from 2014 onwards. Bentley Motors was aware of Bentley Clothing from 1998. Judge Hacon described this approach as a "policy of 'grandmother's footsteps' in relation to Bentley Clothing" in which Bentley Motors intended to gradually encroach on Bentley Clothing's goodwill. The defence was not sustained.
Judge Hacon's decision restricts Bentley Motor's use of the word BENTLEY in relation to clothing to that which they used prior to 1994. This means they can continue to sell jackets, silk ties, caps and scarves under the BENTLEY sign in advertising. The word BENTLEY cannot be used on any clothing.
It is perhaps surprising that Judge Hacon's ruling on whether the Combination Sign was one sign or two was made in part on the basis of Bentley Motor's own belief that the word and the device were two marks, as evidenced by documents such as licence agreements. The device and word mark together arguably create one mark which indicate a single trade origin. However, Judge Hacon's ruling indicated that had the Combination Sign been considered two marks, there still would have been infringement on the basis on section 10(2) and likelihood of confusion.
Case Ref:  EWHC 2925 (Ch)