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4 November 2019TrademarksSaman Javed

Bentley Motors loses 20-year long TM dispute with family-run clothing store

Bentley Motors, has lost a trademark infringement dispute with a small, family-run clothing company.

In a decision, published November 1, the English High Court ruled in favour of Bentley Clothing, finding that Bentley Motors had infringed its trademarks for the word ‘Bentley’.

UK-based Bentley Clothing, which first started trading in 1962, owns three trademarks for the word ‘Bentley’, which are registered in class 25 for clothing and headgear.

The dispute, which dates to 1998, is over Bentley Motors’ combination mark consisting  of two wings, joined by the letter ‘b’ in the centre and the word ‘Bentley’ written underneath.

That year, Bentley Clothing attempted to license its mark to Bentley Motors. Bentley Motors countered by attempting to cancel the clothing brand’s marks at the UK Intellectual Property Office, but failed.

In its decision, the High Court said Bentley Motors may no longer use ‘Bentley’ on its clothing.

It said the average consumer will perceive Bentley Motors’ combination mark as two separate trademarks used simultaneously, and that the dominant component of the trademark is the word ‘Bentley’.

Bentley Clothing said the car maker had full notice of its business and trademarks since 1998, but still began use of the combination mark in 2002.

Additionally, in 2007, Bentley Motors produced a beanie hat and scarf bearing the sign ‘Bentley’ alone.

Bentley Motors argued that these were aberrations, but the court was not convinced.

“It strikes me as unlikely that the beanie hat and scarf could have been marketed without consideration by wider sections of the company,” said presiding judge Richard Hacon.

“I think it reinforces the impression that Bentley Motors believed in its entitlement to use Bentley alone as a sign for clothing,” Hacon added.

The court said it believed that Bentley Motors had made a “conscious decision to develop the use of Bentley in relation to its range of clothing and headgear to increase the prominence of its trademark”, but it did so “only in incremental stages in the hope that no one stage would provoke a reaction from Bentley Clothing”.

Christopher Lees, an owner of Bentley Clothing, welcomed the decision.

“I could either let Volkswagen owned Bentley Motors take from us what had been my family’s since 1990, or spend 15 years and our life-savings fighting them. We tried to reason with Bentley Motors for years. They rejected our offer, didn't make a counter offer, but gave licences to other firms to use the trademark Bentley on clothing in the UK,” Lees said.

It’s been ruinous, financially and emotionally and today’s decision is a huge relief,” he added.

Simon Bennett from the law firm Fox Williams who acted for Bentley Clothing said: “This case shows the power of trademarks to protect the rights of even the smallest of companies against large multinationals.

“The Bentley Clothing trademarks were validly registered and survived numerous attacks by Bentley Motors. The Lees family, as owners of the Bentley Clothing brand, had no choice but to issue high court proceedings to stop Bentley Motors from infringing their marks,” Bennett said.

Damages and costs will be established at a later hearing.

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13 December 2018   British stock clearance company Brandlogic has filed a lawsuit in the English High Court against car manufacturer Bentley, citing infringement of its trademarks for ‘Bentley’.