The Bentley Clothing and Bentley Motors trade mark dispute: Take 2

Last year, Bentley Motors lost a High Court trade mark infringement battle with the small family-run British clothing company Bentley Clothing (run by Chris and Bob Lees). Bentley Motors appealed, and the appeal will be heard on 8 December 2020 in the Court of Appeal. Simon Bennett and Scott Steinberg (both of Fox Williams LLP) will represent Bentley Clothing in the Court of Appeal action (Fox Williams also represented Bentley Clothing in the High Court action).  

Background

The dispute concerned the use by Bentley Motors of (the Combination Sign) on clothing and headgear and whether this infringed Bentley Clothing’s trade marks for BENTLEY registered in class 25 for clothing and headgear. The High Court action follows on from a long running dispute which saw Bentley Motors try and fail to cancel trade marks owned by Bentley Clothing.

The judge found that there was infringement by Bentley Motors on the following grounds:

• Double identity (s10(1) of the Trade Marks Act 1994) – Bentley Motors’ Combination Sign would be perceived as “two distinct signs used simultaneously” so was an identical mark to Bentley Clothing’s BENTLEY signs and infringed in relation to clothing and headgear in the UK.  

• Likelihood of confusion (s10(2) of the Trade Marks Act 1994) – The dominant component of the Combination Sign is the word BENTLEY and there was a likelihood of confusion between Bentley Motors’ Combination Sign and Bentley Clothing’s BENTLEY signs, so there was infringement in relation to clothing and headgear in the UK.  

• Defence in relation to the transitional provisions of the Trade Marks Act 1994 – This only allowed Bentley Motors “to continue after commencement any use which did not amount to infringement … under the old law”. Before the current Trade Marks Act 1994 came into force, Bentley Motors advertised jackets, silk ties, caps and scarves in a catalogue but did not otherwise use the mark on the goods themselves. At that time, Bentley Clothing only had protection for knitted clothing, shirts and waistcoats. The judge decided the defence only allowed Bentley Motors to continue using the mark on jackets, silk ties, caps and scarves in promotional literature and not on the goods themselves. This means that Bentley Motors cannot use the Combination Sign on clothing at all.

• Honest concurrent use defence – This could not be relied on by Bentley Motors.

As a result, Bentley Motors was ordered not to use the sign BENTLEY alone or the Combination Sign on clothing and headgear in the UK (except for the limited exception for the goods mentioned above), to pay damages and costs to Bentley Clothing and to destroy clothing which infringe.  

The appeal

Bentley Motors obtained permission to appeal against:

• Double identity infringement under s10(1) of the Trade Marks Act 1994;
• Infringement for likelihood of confusion under s10(2) of the Trade Marks Act 1994; and
• The interpretation of the transitional provisions.

Chris Lees who is a director of Bentley Clothing, commented as follows: 

“We’ve tried to grow the clothing brand we bought in 1990 and it’s proven impossible. Bentley Motors forced us into a costly legal battle that has been ruinous in many ways. We’ll be very glad when we can finally put a stop to Bentley Motors’ infringements and begin to grow our business to what it once was”.