Bentley Motors Limited v (1) Bentley 1962 Limited (2) Brandlogic Limited [2020] EWCA Civ 1726
This was an appeal from the decision of Hacon HHJ in [2019] EWHC 2925 (Ch) where it was held that the well-known luxury car manufacturer Bentley Motors had infringed Bentley Clothing’s trade marks for the word BENTLEY for clothing (the so-called Word Mark and Series Mark) under both ss.10(1) and 10(2) of the Trade Marks Act 1994 (the “Act”). Hacon HHJ had held that Bentley Motors were not entitled to a defence of honest concurrent user and the defence under the transitional provisions of the Act was narrow and limited only to Bentley Motors’ use prior to the coming into force of the Act on 31 October 1994.
Bentley Motors was granted permission to appeal Hacon HHJ’s findings under ss.10(1) and 10(2) and the transitional provisions (which Bentley Motors put on a wider basis on appeal than at trial). Permission to appeal Hacon HHJ’s decision on honest concurrent use was refused.
The appeal was dismissed.
Before the Court of Appeal, Bentley Motors contended on s.10(1) that Hacon HHJ had failed to consider condition (vi) for infringement, being that the trade mark use must affect, or be liable to affect, one of the functions of the trade mark. The Court of Appeal rejected this argument and agreed with Bentley Clothing that the issue of condition (vi) had never been raised by Bentley Motors at trial (other than in the context of honest concurrent use). Given the Hacon HHJ had rejected Bentley Motors’ case on honest concurrent use and permission to appeal had been refused, it was not open to Bentley Motors to contend that condition (vi) was not satisfied for some other reason. Hacon HHJ was correct to find Bentley Motors had infringed the Word Mark and the Series Mark under s.10(1).
It was therefore not necessary for the Court of Appeal to consider s.10(2).
On the transitional provisions, the Court of Appeal held there was no basis to interfere with Hacon HHJ’s formulation of the defence.
Hugo Cuddigan QC and Mitchell Beebe acted for the Claimants, instructed by Fox Williams LLP