Can a famous brand avoid trade mark clearance for new product categories?
You take a famous car company with a well known trade mark, say Ferrari, and decide that you can get an entirely new revenue stream licensing this mark for use on FMCG products such as clothing. It is a roaring success! Competitors look at this success and think - great idea! Let's copy it... but not all of them clear their rights first. The following is a cautionary tale in more ways than one. I was in charge of this case from its start until well into the disclosure phase. The full story is a fascinating tale which will, I hope, one day be turned into a fantastic film (along the lines of the great McDonald's film - The Founder.
So what happened?
The Court of Appeal handed down its judgment in the Bentley Clothing case on 16 December 2020. They upheld the first instance finding that Bentley Motors had infringed various trade marks for BENTLEY in class 25 (for clothing) belonging to Bentley Clothing.
The case pitched a family-run business, which can trace its use of the BENTLEY marks on clothing back to 1962, against the luxury car company, now owned by Volkswagen. Robert Lees, the owner of the Bentley Clothing companies, has described it as a “David versus Goliath” case. In my view, this is something of an understatement!
Bentley Clothing has three UK trade marks registered for BENTLEY for various items of clothing and headgear in class 25, the first of which was filed in 1982 (pictured above). Bentley Motors started to sell clothing and headgear in 1987, initially using its B-in-Wings device (also above) and later using the words Bentley, Team Bentley and Bentley Collection.
Bentley Clothing had no objection to the use of the B-in-Wings device but alleged that Bentley Motors had infringed its trade marks by selling clothing and headgear by using the word BENTLEY since November 2011.
Writing the judgment for a unanimous Court, Lord Justice Arnold upheld the first instance ruling that the average consumer would perceive the use of the word BENTLEY and the B-in-Wings device to be two distinct signs being used together, and said the judge was correct to conclude that the Bentley Mark had infringed BENTLEY word marks.
The Court also upheld the finding that Bentley Motors had a defence in relation to the sale of “jackets, silk ties, caps and scarves” but not other types of clothing or headgear: it can advertise those goods with literature bearing the BENTLEY sign, but not use that sign on the goods themselves or on tags or other material attached to the goods.
At first instance, the judge rejected the “honest concurrent use” defence. Bentley Motors did not get permission to appeal this issue.
The Bentley case is a reminder that you need to carefully review existing trade mark rights before doing so. In this case, Bentley Motors had many opportunities to resolve the dispute amicably before court proceedings were launched, but declined to do so.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - firstname.lastname@example.org #trademark #brand #rights #fashion #clothing #fashionlaw #IP #intellectual property #law #lawyer #fashionlawyer #luxury