The Bentley Appeal: Bentley Motors Limited v Bentley 1962 Limited and another

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Jane Lambert

Court of Appeal (Lord Justices Lewison and Arnold and Mr Justice Marcus Smith) Bentley Motors Limited v Bentley 1962 Limited and another [2020] 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 [2019] 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:


Secondly, Bentley Motors complained that His Honour had failed to consider whether its use of the above mark had affected, or was likely to affect, the functions of the clothing companies' marks as trade marks.  Thirdly, Bentley Motors contended that the judge had been wrong to restrict its defence under the transitional provisions of the 1994 Act (permitting the continuation of certain uses of its sign that had been allowed under the 1938 Act) to the use of its sign on promotional literature (but not on the goods themselves or on swing tags or the like attached to the goods) that advertised "jackets, silk ties, caps and scarves".

First Ground
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).

Second Ground
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."

Bentley Motors had pleaded that its use of the combination mark did not and was not likely to affect the functions of Bentley because that use constituted "honest concurrent user". Bentley Motors had not raised any other argument as to why the 6th condition had not been satisfied.   Judge Hacon had addressed the issue of honest concurrent user at trial.  Lord Justice Arnold concluded at [47] that it was not therefore open to Bentley Motors to contend that the judge should have found that condition (vi) was not satisfied for any other reason on appeal.   The trial judge had dealt with the point adequately.  His lordship, therefore, rejected the second ground of appeal.

Third Ground
Bentley Motors contended that the judge ought to have allowed it to continue to use the trade marks that it had used under the 1938 Act in relation to "all the clothing types complained of (save for knitted clothing, shirts and waistcoats)"  The substance of the argument was that, given that Bentley Motors had sold "clothing of various kinds as merchandise of its car marque" prior to the new Act's coming into force, it should have been entitled to continue to sell "clothing that serves the same purpose" after that date. It was accepted that this would not entitle Bentley Motors to step wholly outside the types of goods which it had previously sold such as underwear.

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.

Disposal
For all these reasons Lord Justice Arnold dismissed the appeal. Lord Justice Lewison and Mr Justice Marcus Smith agreed.

Further Information
Anyone wishing to discuss this article or trade marks generally may call me during office hours on 020 7404 5252 or send me a message through my contact page.

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