Bentley Motors has been found to have infringed the trademarks of small family-owned clothing brand, Bentley Clothing, despite an appeal by the luxury car brand.
Bentley Motors will not be permitted to use the “BENTLEY” mark as well as their winged “B” logo combined with the word “BENTLEY” in relation to clothing in the UK.
Historically, Bentley Motors has used its well-known winged “B” logo on clothing, but in 2000 it started using the logo together with the word “BENTLEY” too. Manchester-based Bentley Clothing had owned the “BENTLEY” trademark for clothing since 1982 and had been using it throughout the years that followed. Even though Bentley Motors had been established as a company far longer than Bentley Clothing, it did not own the rights to the marks in that class of goods. Bentley Clothing, whose brand had proved impossible to grow in competition with Bentley Motors, therefore approached the car giant to try to agree to terms for their overlapping marks to co-exist, without the worry of consumers confusing the two companies’ products.
Unfortunately though, these discussions broke down. Bentley Clothing issued trademark infringement proceedings after Bentley Motors attempted to have Bentley Clothing’s rights revoked by the Intellectual Property Office.
Both the High Court and then the Court of Appeal unanimously ruled in favour of Bentley Clothing. It was held that the attempts by Bentley Motors to cancel Bentley Clothing’s trademark rights and then market clothing in direct competition with Bentley Clothing featuring an identical brand would be confusing to consumers and therefore infringed Bentley Clothing’s registered trademarks. The decision also stated that the goodwill of Bentley Clothing had likely been violated by Bentley Motors, despite being the lesser-known brand.
As a result, Bentley Motors were ordered not to use the “BENTLEY” mark on its own or with the winged “B” logo on clothing and headgear in the UK, to destroy any infringing clothing and to pay damages and costs to Bentley Clothing.
This case reminds us that early registration and continued use is crucial to protect these rights. It also demonstrates the value of ensuring that trademarks are registered in all classes of goods and services that may be relevant, following thorough searches being carried out. Companies are likely to benefit from taking their time to carry out discussions over the co-existence of overlapping trademarks, rather than simply launching competing brands at risk. Protection of trademark rights can be a lengthy process but is certainly worth doing if the brand holds value to your business.
It is also a nice reminder that the large multinational company doesn’t always win and justice prevails!
Madeleine Rhodes mrhodes@redfernlegal.com
