Bentley Motors has driven itself into trouble over the use of the BENTLEY mark in the UK. It didn’t involve the motor side of the automotive legend, though. Rather, it was a long-winded quarrel with family-owned Bentley Clothing, which culminated in the recent High Court decision regarding BENTLEY-branded apparel.
The following timeline sums up the rather busy background story that played an important role in the final decision—
1921—Bentley Motors’ predecessor started making and selling cars under the BENTLEY name.
1962—Bentley Clothing began selling clothing under the BENTLEY mark.
1982—Bentley Clothing acquired a UK trademark, a stylized mark BENTLEY, for knitted clothing, shirts, and waistcoats.
1987—Bentley Motors started offering anoraks, ties, jackets, belt buckles, and scarves in a catalogue headed “The Bentley Selection.”
1998—Bentley Clothing first contacted Bentley Motors. The correspondence between the two parties did not result in a resolution.
1998—Bentley Clothing filed a UK application for BENTLEY covering a broader category of clothing and headgear. The application was granted by the UKIPO (with no opposition from Bentley Motors).
2004—Bentley Motors applied for an EU mark for the word BENTLEY in relation to goods in class 25 (clothing, footwear, and headgear), among other classes.
2005—Bentley Clothing opposed Bentley Motors’ EU application so far as it was directed at goods in class 25 and wrote again to the company, which responded that clothing was not seen as a “major growth area” for Bentley Motors and wasn’t a priority for the company.
2007—Bentley Motors launched a clothing line under the name BENTLEY COLLECTION that included jackets, tops, t-shirts, scarf and hat sets for adults, and children's baseball caps, t-shirts, and fleece tops.
2007—Bentley Motors limited its 2004 EU application by deleting class 25 completely, and, as a result, the EUIPO closed Bentley Clothing’s opposition directed at these goods.
2008—Bentley Clothing filed another UK application for the word mark BENTLEY covering clothing, footwear, and headgear, which the UKIPO granted.
2015—Bentley Motors filed two word-mark applications for BENTLEY, one in the UK and the other in the EU, covering clothing, headgear, and footwear. Bentley Clothing opposed them. In the EU, Bentley Motors withdrew class 25, thus causing the EUIPO to close Bentley Clothing’s opposition, while the proceedings at the UK IPO are still pending.
2015-2016—Bentley Motors instituted a number of proceedings in the UK and EU IPOs for the revocation of Bentley Clothing’s marks, alleging non-use and that Bentley Motors owned earlier goodwill in the business in clothing.
Having set the facts of the case straight, the judge concluded that, “It is possible for the status of concurrent use of a trademark, i.e. whether it is honest or not, to change over time.” This was bad news for Bentley Motors, since it meant that, in the court’s view, Bentley Motors was now infringing the Bentley Clothing marks obtained in 1998 and 2008.
At the same time, though, the judge did not find that Bentley Motors had infringed the earliest Bentley Clothing mark, from 1982. That mark had been limited to knitted clothing, shirts, and waistcoats. Therefore, Bentley Motors’ use of BENTLEY on other apparel (i.e., on the anoraks, ties, jackets, belt buckles, and scarves it had begun selling in around 1987) was honest concurrent use and therefore permissible. The court appreciated that although Bentley Motors' sales of these items between 1987 and 1998 had been very modest, it may have acquired substantial goodwill as a result.
But the judge found that the situation changed when—even though Bentley Clothing approached Bentley Motors in 1998 and explicitly put it on notice of its business and trademarks—Bentley Motors continued, and even expanded, its use of the BENTLEY mark on various items of clothing, including a hat and scarf bearing the word BENTLEY alone.
Not surprisingly, Bentley Clothing had not been pleased by Bentley’s Motors decision to ignore it. The court wasn’t either and declared that Bentley Motors’ actions “from around 2000” did not constitute honest concurrent use. As the decision notes, the evidence confirms that from that time on, “Bentley Motors engaged in a policy of 'grandmother's footsteps' in relation to Bentley Clothing—a conscious decision to develop the use of BENTLEY in relation to their range of clothing and headgear such as to increase the prominence of that sign, but only in incremental stages in the hope that no one stage would provoke a reaction from Bentley Clothing.” The judge thus concluded that Bentley Motors’s actions were intentional and “amounted to a steady encroachment on Bentley Clothing's goodwill.” Indeed, Bentley Motors’ trademark application for clothing, as well as the proceedings it instituted at the UKIPO and EUIPO against Bentley Clothing in 2015-16, only reinforced the court’s opinion that Bentley Motors’ intention was to clear away, and ultimately extinguish altogether, Bentley Clothing's rights in relation to clothing and headgear.
It appears that the automotive giant has taken the finding of its infringement of BENTLEY marks seriously this time as no articles of clothing are currently available on Bentley Motors online store.
This case serves as a reminder that a long-standing brand with a reputation in certain fields does not automatically justify its expansion into a different area. Instead, prior-rights searches are a must not only before applying for a trademark registration but also prior to offering any branded goods for sale for the first time.
The case is Bentley 1962 Ltd & Anor v Bentley Motors Ltd [2019] EWHC 2925 (Ch) (November 1, 2019)
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
