Background

Bentley Clothing, a Manchester-based family firm issued proceedings for trademark infringement against the world-renowned luxury car manufacturer, Bentley Motors.

Bentley Clothing has been selling clothing under the brand name ‘BENTLEY’ since 1962 and have registered and owned the trademark for clothing since 1982.

However, in 1987 car giant Bentley Motors also began to sell clothing under the ‘Bentley’ name.

As such, Bentley Clothing made itself known to Bentley Motors in 1998 and offered to license the trademark to Bentley Motors. Long-winded negotiations ensued but, ultimately, Bentley Motors declined Bentley Clothing’s offer and in 2011, they sought to cancel Bentley Clothing’s trademark at the UK Intellectual Property Office.

Despite Bentley Motors failing to cancel the Bentley Clothing trademark, Bentley Motors have continued to sell their clothing using the ‘Bentley’ name.

Consequently, in an attempt to protect their trademark rights, Bentley Clothing issued proceedings against Bentley Motors at the High Court in London.

Judgement

The High Court Judge considered whether Bentley Motors’ use of the sign infringed the trademark owned by Bentley Clothing.

The Judge found that although Bentley Motors claimed that they had not been aware of the trademark, Bentley Clothing had clearly made themselves known to Bentley Motors in 1998 and Bentley Motors had undoubtedly acknowledged their presence.

The Judge noted that a simple trademark search would have revealed that the sign ‘Bentley’ had already been registered against clothing.

It was therefore concluded that Bentley Motors’ use of the sign did indeed infringe the trademark owned by Bentley Clothing. The Judge noted that Bentley Motors had even made a false claim of ownership of ‘BENTLEY’ as a UK trademark for clothing and considered that their use of the sign amounted to a ‘steady encroachment of Bentley Clothing’s goodwill’.

Moreover, the Judge held that their use of the name unfairly prejudiced the rights of Bentley Clothing as Bentley Motors had ‘sought to clear away Bentley Clothing’s right to protect the BENTLEY mark for clothing and headgear and ultimately extinguish Bentley Clothing’s right altogether’.

It is assumed that Bentley Motors will seek permission to appeal this decision, if Bentley Motors does not win permission to appeal, it will:

• have to limit its use of the ‘BENTLEY’ mark to its range of jackets, silk ties, caps and scarves;
• likely have to pay damages and costs to Bentley Clothing; and
• be required to deliver up or destroy clothing which infringes the trademark.

Case comment

As Bentley Clothing’s solicitor stated, “this case shows the power of trademarks to protect the rights of even the smallest of companies against large multinationals”.

This case demonstrates the weight UK Courts afford to registered trademarks and highlights the importance, to business owners, of protecting their intellectual property rights and ensuring that these are appropriately safe-guarded and, where appropriate, registered.

It also emphasises the requirement for all business owners to ensure that they carry out the necessary intellectual property searches and due diligence to ensure that they are not infringing existing intellectual property rights, as the consequences can be severe, no matter the size and repute of your business.

Our team of lawyers on our Commercial and IP team at Berry Smith have expertise in trademark and intellectual property law. For further information or assistance, please contact us on 029 20 345511 and ask for the commercial team.