PremiumIn true David versus Goliath fashion, Bentley Clothing, a small family-run clothing business based out of Manchester, has prevailed over Volkswagen-owned luxury carmakers Bentley Motors for the second time in a long-running trademark dispute.
In November of last year, the High Court in London deemed that Bentley Motors infringed the trademarks owned by Brandlogic, which owns Bentley Clothing. The 2019 ruling held that Bentley Motors could no longer use its name, by itself or combined with its famous wings logo, on its clothing range in the UK and would have to limit its future range to jackets, silk ties, caps, and scarves and not sell any other clothing or headgear. Further, Bentley Motors will have to either destroy or hand over all remaining clothing that is in stock or yet to be sold and pay damages to Bentley Clothing.
Bentley Motors appealed this decision. However, by unanimous decision, the Court of Appeal's Justice Marcus Smith, Lord Justice Lewison, and Lord Justice Arnold upheld the High Court's ruling, reaffirming that Bentley Motors had indeed infringed the registered trademark of Bentley Clothing by using an identical trademark on its clothing line.
Bentley Motors and Bentley Clothing have both sold Bentley branded clothes for decades. Bentley Clothing had registered the Bentley trademark for clothing in 1982 after having been established in 1962. Bentley Motors, established in 1919, started selling branded clothes in 1987, 25 years after Bentley Clothing. The dispute arose in 1998 when Bentley Clothing first approached Bentley Motors about the trademark in use. At that time, Bentley Motors was selling a limited collection of its clothing bearing its B-in-wings logo. Discussions between the parties did not produce favourable results for Bentley Clothing. Bentley Motors swiftly decided to undertake concerted efforts to expand its clothing line and started using the 'Bentley' name alongside its logo. Bentley Motors then began trying to revoke Bentley Clothing's trademark rights at the UK Intellectual Property Office.
As per UK laws, a registered trademark is infringed when the infringer, without obtaining consent from the registered trademark holder, uses an identical sign, be it a logo or a name, for its goods or services despite the possibility of confusion by the average consumer. By making attempts to revoke Bentley Clothings' trademark and by developing merchandise in direct competition with Bentley Clothing using the identical brand name, Bentley Motors had inadvertently assisted in creating confusion between the brands. As a result, while Bentley Motors and Bentley Clothing have sold clothes concurrently for many years, peaceful coexistence of trademarks is not an option.
This case highlights the importance of the early registration of trademarks. As seen here, registering first can enable even the smallest of companies to triumph against the largest multinationals. By registering its trademark first and continuing to use it, Bentley Clothing established a monopoly over the word 'Bentley' regarding clothes in the UK. However, registration of a trademark alone is not enough grounds for protection. A business would have to continue using the trademark to retain it still. Should Bentley Clothing have ceased trading, Bentley Motors would not have had much trouble taking the brand name.
There is an interesting dichotomy to take note of here. It was held that Bentley Motors encroached on the goodwill generated by Bentley Clothing by focussing on its clothing range using the 'Bentley' name. Surely, however, most average consumers would think that a piece of clothing with 'Bentley' on it belonged to the famous luxury carmaker instead of a local store that is not nearly as well-known. This only contributes to the confusion the law tries to avoid. However, as this is the current norm and status quo, it further highlights how courts are likely to find in favour of those who registered the trademark first, even if the average consumer associates the trade with a different, more famous brand.
Another example of a similar approach, albeit in a different country where litigation was avoided, can be seen in Burger King's Australian operations. As the 'Burger King' name was already registered and in use by a takeaway food shop in Adelaide, Burger King operates under the name 'Hungry Jack's' in Australia.
