Trade marks – creating a level playing field for businesses

Bentley 1962 Limited and another v Bentley Motors Limited

The High Court has recently handed down a decision in a long-running trade mark dispute between commercial organisations of very different sizes and reputations. The Court has held in favour of a small clothing company (Bentley 1962 Limited) and found that its word mark Bentley registered for clothing and headgear has been infringed by the luxury car manufacturer, Bentley Motors.

The case revolved around a number of key issues:

  •  Bentley Motors had used a combination sign consisting of a B-winged device and the word Bentley in relation to clothing items and claimed that the combination sign was a single trade mark rather than two separate marks which gave them a potential defence against infringement under the Trade Marks Act 1994 on the basis that their mark was not confusingly similar.
  • The Court rejected the claim that the combination sign constituted a single sign – as evidence of clothing tags, marketing literature and licence agreements indicated that Bentley Motors had treated the winged B sign and Bentley word as separate trade marks up until 2014 – equally important, the Court felt that the average consumer in 2014 would have seen the combination sign as comprising two distinct signs, as the Bentley word continued to be used extensively on its own. As a result, use of the combination sign by Bentley Motors constituted clear infringement of Bentley Clothing’s mark.
  • The court also decided that there would have been trade mark infringement even if Bentley Motor’s combination sign only comprised one mark: due to the fact that the word Bentley was the dominant element in the combination sign, leading to a likelihood of confusion between the rival marks.
  • Finally, the court rejected the additional defence put forward by Bentley Motors which was that there had been honest concurrent use of the word Bentley by them in relation to clothing and headgear. The court rejected this defence as there was evidence that, from 2000 Bentley Motors had followed a deliberate policy of gradually widening the use of its mark for clothing and headgear in the hope that this would not provoke a response from Bentley Clothing. Accordingly, such use by Bentley Motors could not constitute honest concurrent use as it was effectively trying to acquire the goodwill in the Bentley brand belonging to Bentley Clothing.
Key Points to take away
  1. Using logos to distinguish similar word marks – the decision is a salutary warning to those who sometimes try to avoid infringing an existing word mark by adding some form of logo or device as in this case (and no doubt in many others), the court is likely to see the logo/device element in a combination sign as a separate sign and conclude that the word is the dominant element in the combined sign;
  2. Likelihood of confusion – similarly, the court gave short shrift to Bentley Motors’ argument that as their business was far bigger and better known than that of Bentley Clothing, there would never have been any confusion in practice because the average consumer would have concluded that “Bentley” referred to Bentley Motors rather than Bentley Clothing – the relevant case law requires courts to consider the likelihood of confusion arising on the assumption that Bentley Clothing had made a notional and fair use of its mark “Bentley” leading to the finding that there was a likelihood of confusion; the fact that no actual confusion was demonstrated by Bentley Clothing was not fatal to its claim;
  3. Honest concurrent use – Bentley Motors also failed in their attempt to rely upon this defence which rests on case law: in essence, the court felt that Bentley Motors were not able to invoke the defence as the relevant facts demonstrated that since 2000 Bentley Motors had undertaken a policy of “grandmother’s footsteps” in which they had attempted to gradually increase the use of “Bentley” to a wider range of clothing and headgear goods and encroach on Bentley Clothing’s goodwill;
  4. Advantages of a registered trade mark – overall, the case shows that it far easier for a business to protect names/brands where they have registered trade marks rather than relying upon unregistered marks through the law of passing off. Once trade marks have been registered, it helps to create a level playing field between parties of greatly differing sizes and resources.