Trade Marks - Bentley 1962 Ltd and another v Bentley Motors Ltd.
Chancery Division (HH Judge Hacon) Bentley 1962 Ltd and another v Bentley Motors Ltd  EWHC 2925 (Ch) (1 Nov 2019)
This was a claim for trade mark infringement against the well-known luxury car manufacturer, Bentley Motors Ltd. The first claimant is the registered proprietor of UK trade mark numbers, 1180215 (the "lozenge mark"), 2177779A (the "series mark") and 2505233 (the "word mark"). The second defendant is its exclusive licensee, They alleged that Bentley Motors had infringed those trade marks by selling clothing under the following sign ("the combination sign").
The action came on for trial before His Honour Judge Hacon sitting as a judge of the High Court. The judge tried the action between 2 and 5 July 2019 and delivered judgment on 1 Nov 2019 (see Bentley 1962 Ltd and another v Bentley Motors Ltd  EWHC 2925 (Ch) (1 Nov 2019)). At paragraph  of his judgment, he held that the first claimant had succeeded in its allegation of infringement of the series and word marks.
There was no dispute that the defendant had used the combination sign for clothing and headgear which were goods for which the series mark and the word mark had been registered. There was, however, a dispute over whether the combination sign was two signs or just one. The claimants had never objected to the use of the winged "B" device even in relation to clothing and headgear but they did, of course, object to the sale by the defendant of clothing and headgear under the BENTLEY sign alone. The significance of the issue was that there would be no defence under s.10 (1) of the Trade Marks Act 1994 if the combination sign consisted of two separate signs but there might under s.10 (2) (b) if it consisted only of one.
The claimants argued that the question whether the combination sign was one or two signs had already been decided in their favour by Mr G. Salrhouse on behalf of the Registrar in Re Bentley 1962 Limited's Trade Mark BL O/117/17 15 March 2017. That was an unsuccessful application by Bentley Motors for the invalidation of the word mark under s.47 (2). The judge analysed Mr Salthouse's decision very carefully but concluded at paragraph  that the hearing officer had made no finding that created an issue estoppel in the proceedings before him.
The judge proceeded to consider the issue de novo. He was shown swing tags, marketing literature and licence agreements that indicated that the defendant motor manufacturer had treated the winged "B" sign and the BENTLEY name as separate trade marks up to 2014. There seems to have been a change that year when the motor manufacturer issued guidelines requiring the winged "B" and name always to be used together and never separately. He said at :
"I think that three points must be borne in mind. First, the average consumer would in 2014 have been familiar with the B-in-Wings device and the BENTLEY name as separate and distinct signs. Secondly, there is no reason to suppose that the average consumer would know anything about Bentley Motors' new intention that the device should always appear with the name. Thirdly, on any view the average consumer would regard the BENTLEY name as a single distinct sign because it was and continues to be used extensively by itself. Not in the case of clothing and headgear since around 2012 to 2014, but I think that it would take a consumer more observant than the average consumer to notice this."
I should mention in passing that the judge noted at paragraph  of his judgement that it had been agreed that the average consumer is a member of the public who buys clothing and/or headgear.
Having made that finding, he had to conclude at  that it was "likely that since 2014, and even now, upon seeing the Combination Sign the average consumer would perceive it to be two distinct signs used simultaneously. Use of the Combination Sign therefore constitutes use of the BENTLEY sign and an infringement of the Word and Series Marks pursuant to s.10 (1) of the 1994 Act."
In case he was wrong to find that the word and series marks had been infringed under s.10 (1) the learned judge considered whether the combination sign taken as a single sign would infringe those marks under s.10 (2). The defendant argued that it would not because there would be no likelihood of confusion. Judge Hacon referred to the opinion of the Advocate General in C-145/05 Levi Strauss & Co. v Casucci SpA  ECR I-3703,  FSR 8,  EUECJ C-145/05,  ETMR 71 and the judgment of Mr Justice Arnold (as he then was) in Sky Plc and others v Skykick UK Ltd and another  EWHC 155 (Ch),  RPC 5,  ETMR 23. Bentley Motors had invited the judge to compare its considerable global reputation in relation to luxury goods including clothing with the claimant's much more modest reputation. The judge rejected that submission as inconsistent with Maier. He was obliged by that case to assess the likelihood of confusion on the assumption that Bentley Clothing has made a notional and fair use of its trade marks. He compared the combination sign with the registered marks and found that the word BENTLEY was dominant. He concluded at :
"Applying all the principles set out in Maier and having particularly in mind the dominant feature of the Combination Sign, in my view there was a likelihood of confusion between that sign and the Word and Series trade marks owned by Bentley Clothing."
It followed that there would have been an infringement under s.10 (2).
Bentley Motors raised three other defences. The first was that they were entitled to continue to do acts that had been lawful under the Trade Marks Act 1938 but had ceased to be lawful under the Trade Marks Act 1994 by virtue of the transitional provisions under paragraph 4 to Schedule 3 of the 1994 Act. The second was honest concurrent user. The last was a challenge to the second claimant's locus standi on the ground that an agreement between the first and second claimants did not confer an exclusive licence on the second claimant.
As ti the first of those defences, the judge held at  that Bentley Motors was entitled to continue the sale of jackets, silk ties, caps and scarves as it had before 1994, but not other types of clothing or headgear. It was entitled to advertise those goods by means of literature bearing the BENTLEY sign, but not to use that sign on the goods themselves or on tags or other material attached to the goods It followed that the transitional provision afforded no defence to the judge's findings as to the defendant's liability under s.10 (1) or (2).
In respect of honest concurrent user, Judge Hacon reviewed the authorities and directed himself ay :
"If longstanding use of the BENTLEY sign by Bentley Motors for those goods has led that name to denote either Bentley Clothing or Bentley Motors when used in relation to clothing or headgear and Bentley Motors has taken no steps to exacerbate the level of confusion which is an inevitable consequence of the dual use of BENTLEY and thereby to encroach upon Bentley Clothing's goodwill, there is a defence of honest concurrent use."
For the next 31 paragraphs, he considered the history of the motor manufacturer's use of the Bentley mark in clothing. He addressed the claimants' argument between paragraphs  and  and the defendant's between  and . He held at :
"That evidence gives the strong impression that from around 2000 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 concluded at  that did not constitute honest concurrent use. On the contrary, it was consistent with a strategy of arrogating to itself the goodwill in the BENTLEY brand in relation to clothing and of clearing away through proceedings in the Intellectual Property Office and EU Intellectual Property Office the clothing company's rights in the brand.
The agreement between the claimants had not been drawn up by lawyers and contained the following provision:
"Bentley 1962 Limited (the OWNER) is the owner of all the UK registered trademarks relating to 'BENTLEY' for goods in class 25 as listed in the attached schedule A and by this agreement appoints Brandlogic Limited (the MANAGER) on a sole and exclusive basis to manage and develop the scheduled trademarks and the BENTLEY clothing brand on behalf of the OWNER, on the following terms,"
Judge Hacon found that was enough to constitute an exclusive licence.
Anyone wishing to discuss this article or trade marks generally should call me on 020 7404 5252 during normal office hours or send me a message through my contact page.