In November 2019, a small Manchester based clothing company won its High Court case against the luxury car manufacturer, Bentley Motors, for using its name on a range of clothing.
Bentley Clothing, founded in 1962, has owned the associated trademark since the early 1980s. Bentley Motors first started selling a UK range of clothing bearing the name in 1987. Bentley Clothing approached the Volkswagen owned car firm in 1998, in order to establish a licence agreement for Bentley’s use of the trademark. Instead, the car manufacturer made failed attempts to cancel the clothing company’s trademark. In turn, the clothing company instigated proceedings before the UK High Court for infringement of its trademark.
UK High Court Judge, Richard Hacon, ruled in favour of the clothing company. In his decision Hacon wrote, ‘’ My impression of Bentley Motors’ policy is… consistent with an intent to clear away Bentley Clothing’s right to protect the Bentley mark for clothing and headgear and ultimately to extinguish Bentley Clothing’s right altogether.” The car manufacturer was ordered to pay costs to Bentley Clothing. They also had to destroy all infringing products or deliver them to Bentley Clothing to be destroyed.
Bentley Clothing’s director, Christopher Lees said, ‘’ I could either let Volkswagen-owned Bentley Motors take from us what had been my families since 1990 or spend 15 years and our life-savings fighting them.”
Bentley Motors appealed against the High Court decision which was dismissed by the Court of Appeal on the 16 December 2020 ruling. The Court of Appeal ruled that there was no error in the High Courts Judge’s approach. The six conditions under Article5(1)(a) were fulfilled which are:
- Use of a sign by a third party within the relevant territory.
- The use was in the course of trade.
- The use was without the trade mark owners’ consent.
- The use was of a sign which was identical to the trademark.
- The use was in relation to goods or services which were identical to those for which the trade mark was registered.
- The use affected, or was likely to affect, one of the functions of the trade mark.
Bentley Motors had a limited defence based on the Trade Marks Act 1994 to the infringement claim as it has sold silk ties, caps, jacket, and scarves prior to 31 October 1994. None of those items were identical to the knitted clothing, shirts, and waistcoats of Bentley Clothing and as such the use of the word Bentley in relation to those goods did not infringe. Bentley Motors may continue to use the sign in relation to the pre 1994 items. Bentley Motors argued that the judge should have found that the defence extended to a wider range of clothing. However, the defence did not extend to the items of knitted clothing, shirts and waistcoats for which Bentley Clothing had held a trade mark since 1982 and it did not extent to other types of clothing.
This case demonstrates the strength that trade marks have to protect the rights of the holder, even when it is a small company against a large corporation. At Lawdit we can assist you with registering your trade marks and any trade mark related dispute.
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