The Bentley Appeal: Bentley Motors Limited v Bentley 1962 Limited and another
Court of Appeal (Lord Justices Lewison and Arnold and Mr Justice Marcus Smith) Bentley Motors Limited v Bentley 1962 Limited and another  EWCA Civ 1726 (16 Dec2020)
This was an appeal by Bentley Motors Limited against Judge Hacon's decision in Bentley 1962 Ltd and another v Bentley Motors Ltd  EWHC 2925 (Ch) (1 Nov 2019) which I discussed in Trade Marks - Bentley 1962 Ltd and another v Bentley Motors Ltd. on 3 Nov 2019. In that decision, the learned judge held that Bentley Motors had infringed trade mark numbers 1180215, 2177779A and 2505233 by marketing and distributing clothing and headgear with the word "BENTLEY" in combination with the motor company's winged "B" emblem. The above picture is an example of the use of the combination to which the claimants objected.
Grounds of Appeal
Bentley Motors' grounds of appeal were as follows. First, the judge had been wrong to hold that the average consumer of clothing and/or headgear would perceive the use of the following combination to be of two distinct signs simultaneously:
According to Lord Justice Arnold who delivered the lead judgment, the first point was hardly argued. It had been a significant point at trial because it had been argued that the word BENTLEY simpliciter would infringe trademark nimber 2505233 under s.10 (1) of the Trade Marks Act 1994 but the combination of the word BENTLEY and the winged B emblem would not infringe any of the marks under s.10 (2) (b). That argument had been resolved largely in favour of the clothing companies. The Court (as well as the court below) held that the motor company would have been liable under s.10 (2) (b) as well as under s.10 (1).
The Court of Justice of the European Union had established that six conditions must be fulfilled in order for there to be prima facie infringement under s.10 (1):
"i) There must be use of a sign by a third party within the relevant territory.
ii) The use must be in the course of trade.
iii) The use must be without the consent of the proprietor of the trade mark.
iv) The use must be of a sign which is identical to the trade mark.
v) The use must be (a) in relation to goods or services (b) which are identical to those for which the trade mark is registered.
vi) The use must affect, or be liable to affect, one of the functions of the trade mark."
The Court of Appeal rejected that argument. There was nothing in the provisional measures that allowed Bentley Motors to continue to sell clothing that served the same purpose. That would have amounted to an expansion of the defendants' entitlement when the policy of the act was the extend the rights of trade mark proprietors. The Court could see no grounds for interfering with the trial judge's finding.