Bentley 1962 Ltd & Anor v Bentley Motors Ltd [2019] EWHC 2925 (Ch)
This was a claim of trade mark infringement under ss.10(1) and 10(2) of the Trade Marks Act 1994 against the well-known luxury car manufacturer Bentley Motors Limited. The Claimants, Bentley 1962 Limited and Brandlogic Limited (together, “Bentley Clothing”), were respectively, a family firm who sold clothing under the brand ‘Bentley’ and the owner of three registered UK Trade Marks containing the word BENTLEY. Bentley Motors had used the word BENTLEY on clothing both alone and in combination with the ‘B in Wings’ device (referred to as the “Combination Sign”).
Bentley Clothing succeeded under both ss.10(1) and 10(2).
In relation to s.10(1), Bentley Clothing’s case was that use of the Combination Sign was use of two separate marks – the word BENTLEY and the ‘B in Wings’. This was put on two grounds. First, Bentley Motors was estopped from saying the Combination Sign was one mark given a prior decision involving the parties in the UKIPO, and second, the average consumer would treat it as two marks. While there was no estoppel, Hacon HHJ held that the Combination Sign was two marks and its use in relation to clothing was infringement of Bentley Clothing’s word marks for BENTLEY. Had there been no infringement under s.10(1), it was held that there would have been infringement under s.10(2).
Hacon HHJ then considered Bentley Motors’ defences. The first concerned the transitional provisions under the Trade Marks Act 1994. Due to some clothing sales prior to 1994, Bentley Motors was permitted to use the word BENTLEY to a limited extent on advertising literature for the sale of jackets, silk ties, caps and scarves but not on the goods themselves or on tags or other materials attached to the goods. The second defence was honest concurrent use. Since 1998, Bentley Motors had been on notice as to Bentley Clothing’s business and trade marks. It had adopted a policy of ‘grandmother’s footsteps’, involving a conscious decision to adopt use of the word BENTLEY in incremental stages to avoid triggering a response from Bentley Clothing. This conduct did not constitute honest concurrent use. This defence was rejected.
Hugo Cuddigan QC and Mitchell Beebe acted for the Claimants, instructed by Fox Williams LLP