Bentley Motors loses trademark invalidity action against Bentley

Car company Bentley Motors has lost a trademark invalidity action against UK-based clothing company Bentley.

The Bentley clothing brand, established in 1962, had registered the trademark ‘Bentley’ at the UK Intellectual Property Office (IPO) in 2009.

The trademark covers class 25—clothing, footwear, and headgear.

In 2015, Bentley Motors applied for a declaration of invalidity, arguing that the goods covered by Bentley’s mark were confusingly similar to those protected by the motor company’s EU 3925187 trademark.

Bentley Motors argued that as of December 2008 (when Bentley’s mark was applied for), the motor company had “acquired an exceptional reputation in relation to the design and manufacture of high-end luxury motor cars”.

The company added that it had used the ‘Bentley’ mark for jewellery, handbags and clothing since 1920, and that by 2008 it had a “very high level” of goodwill in the mark.

It relied on EU 3925187 for “jewellery and watches” in class 14 and “leather and imitations of leather and goods made therefrom; bags, holdalls, wallets, purses” in class 18.

Bentley provided a counter-statement in February 2016, arguing that Bentley Motors doesn’t have any reputation or goodwill in the goods and services listed.

It also claimed that Bentley Motors had acquiesced use of the mark ‘Bentley’ on clothing.

In a decision handed down on Wednesday, March 15, the IPO said that Bentley Motors had failed to provide any evidence of use of its mark for any of the goods relied on.

George Salthouse, hearing officer, added: “I do not accept that Bentley Motors have met the burden upon them to show that they have used their mark … during the relevant period.”

Bentley Motors also sought to rely on invalidity based on section 5(3) of the Trade Marks Act 1994, arguing that the ‘Bentley’ mark took unfair advantage of the reputation of Bentley Motors’ trademark for motor cars and car-related goods in class 12.

Although the IPO agreed that Bentley Motors had met the proof of use requirement, it held that use of the mark by Bentley would not take unfair advantage.

However, Bentley’s argument of acquiescence failed.

Christopher Lees, director at Manchester-based clothing company Bentley, said: “My lawyers are now considering next steps. This battle has been so extreme, involving the CEOs of both Volkswagen and Bentley Motors, that a film producer has asked to make a film about it.”

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