In early November, luxury automaker Bentley Motors found itself on the losing end of a battle against a small apparel company, Bentley Clothing. On November 1, 2019, the English High Court of Justice held that by making garments under the Bentley brand name, Bentley Motors was running afoul of Bentley Clothing’s right to exclusively manufacture and sell apparel using the Bentley name.

THE HISTORY

The battle between the Bentley clothing name has been ongoing for decades. Bentley Clothing, owned by Manchester-based Brandlogic, has been using the Bentley name in the United Kingdom for over 30 years, and has a registered trade mark in the UK in connection to clothing and accessories, specifically for “retail and wholesale services connected with the sale of vehicles and parts and accessories […]”.

In 1998, Brandlogic approached Bentley Motors to license the mark. However, Bentley Motors continued to sell clothing using the Bentley name without permission from Brandlogic. In fact, the company moved forward in attempting to invalidate the mark registered by Bentley Clothing without success.

Though Bentley Motors opposed Bentley Clothing’s trademark registration prior to it being registered with the United Kingdom Intellectual Property Office (UK IPO) in September 2015, the UK IPO trademark hearing officer was not persuaded that that the trademark application was confusingly similar to various trademark registrations that Bentley Motors maintained. Bentley Motors did not have a registration specific to garments, but claimed to use the mark “Bentley” in relation to clothing items for decades, though no evidence of this use was provided to the UK IPO.

HONEST AND CONCURRENT USE

One of the defences Bentley Motors’ relied on was that of honest concurrent use. This defence derived from the Court of Justice of the European Union decision Budejovický Budvar, národní podnik v Anheuser-Busch Inc (C-482/09) EU:C:2011:605; [2012] RPC 11. The case states at paragraph 85:

[T]he proprietor of an earlier trade mark cannot be held to have acquiesced in the long and well-established honest use, of which he has long been aware, by a third party of a later trade mark which is identical with that of the proprietor if that proprietor was not in any position to oppose that use.

Thus, a trade mark is infringing only if the “use of the sign in issue is liable to affect the functions of the mark”. Honest and concurrent use would not have or would not be liable to have an adverse impact of the foundational function of the trade mark, thus making it a defence to infringement.

Victoria Plum Ltd v Victorian Plumbing Ltd [2016] EWHC 2911 (Ch); [2017] FSR 1, further established various guiding principles with respect to the defence of honest concurrent use.

(i) Where two separate entities have co-existed for a long period, honestly using the same or closely similar names, the inevitable confusion that arises may have to be tolerated.

(ii) This will be the case where the trade mark serves to indicate the goods or services of either of those entities, as opposed to one of them alone. In those circumstances, the guarantee of origin of the claimant’s trade mark is not impaired by the defendant’s use, because the trade mark does not denote the claimant alone.

(iii) However, the defendant must not take steps which exacerbate the level of confusion beyond that which is inevitable and so encroach upon the claimant’s goodwill.”

In using the Bentley combination sign with clothing, if Bentley Motors led that name to represent either Bentley Clothing or Bentley Motors and Bentley Motors has taken no steps to worsen the expected inevitable level of confusion, a defence of honest concurrent use may be available.

THE DECISION

Upon assessing the history between the two companies and their use of the Bentley name in relation to clothing, the UK IPO trademark hearing officer concluded that Bentley Motors’ use of the Bentley name on clothing did not constitute honest concurrent use. Rather, it fell in line with the company’s strategy to misappropriate the goodwill of Bentley Clothing’s brand. The decision states:

“[…] 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“.

If Bentley Motors does not win permission to appeal, the company could be required to destroy all “Bentley” branded clothing or transfer all “Bentley” branded apparel to Brandlogic.