Bentley Motors has lost a High Court trade mark infringement battle with small family-run British clothing company Bentley Clothing run by Chris and Bob Lees. Simon Bennett, partner in the fashion law group at Fox Williams LLP, represented Bentley Clothing.
The dispute concerned the use by Bentley Motors ofon clothing and whether this infringed Bentley Clothing’s trade mark BENTLEY registered in class 25 for clothing.
Following the judgment Bentley Motors will:
no longer able to use the trade mark BENTLEY and on clothing;
have to pay damages and costs to Bentley Clothing;
be required to deliver up or destroy clothing which infringe the trade mark BENTLEY.
Bentley Clothing was established in 1962 and its trade marks for BENTLEY for clothing dated back to 1982.
Bentley Clothing attempted to licence its mark to Bentley Motors over several years starting in 1998. But instead of negotiating a deal Bentley Motors tried to cancel Bentley Clothing’s trade marks at the UK Intellectual Property Office. This lasted five years and ultimately failed. Bentley Clothing had no choice but to protect its rights and issued High Court proceedings for trade mark infringement against Bentley Motors.
In a decision handed down on Friday, the High Court ruled that Bentley Motors had infringed its registered trade marks for clothing.
At the heart of the case was the following questions:
(a) did the use by Bentley of the combination sign on clothing infringe the trade mark owned by Bentley Clothing in class 25 for clothing?
(b) if so, did Bentley Motors have a defence of honest concurrent use because their use did not unfairly prejudice the rights of Bentley Clothing?
The Judge ruled yes to the first question and no to the second. The behaviour of Bentley Motors in slowly but surely increasing its use of Bentley on clothing “amounted to a steady encroachment on Bentley Clothing’s goodwill.” He added a more damning indictment:
“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”
Simon Bennett who leads the IP and trade marks team at Fox Williams commented: “The case shows the power of trade marks to protect the rights of even the smallest of companies against large multinationals. The registration of a trade mark is crucial for the protection of a name and can be achieved for a relatively small sum.
This case is, however, unusual as it could have been resolved at an early stage through negotiation. We act for a large number of fashion clients who have intellectual property disputes and we normally achieve a commercial settlement without the case needing to go all the way to a Court hearing.”
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