Bentley Motors Ltd v Bentley 1962 Ltd

JurisdictionEngland & Wales
JudgeMr Justice Marcus Smith,Lord Justice Arnold,Lord Justice Lewison
Judgment Date16 December 2020
Neutral Citation[2020] EWCA Civ 1726
Date16 December 2020
Docket NumberCase No: A3/2019/2988
CourtCourt of Appeal (Civil Division)
Between:
Bentley Motors Limited
Appellant
and
(1) Bentley 1962 Limited
(2) Brandlogic Limited
Respondents

[2020] EWCA Civ 1726

Before:

Lord Justice Lewison

Lord Justice Arnold

and

Mr Justice Marcus Smith

Case No: A3/2019/2988

IN THE COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM THE HIGH COURT OF JUSTICE, BUSINESS AND PROPERTY

COURTS, INTELLECTUAL PROPERTY LIST (CHANCERY DIVISION)

His Honour Judge Hacon

[2019] EWHC 2925 (Ch)

Royal Courts of Justice

Strand, London, WC2A 2LL

Simon Malynicz QC, Amanda Michaels and Charlotte Blythe (instructed by Eversheds Sutherland (International) LLP) for the Appellant

Hugo Cuddigan QC and Mitchell Beebe (instructed by Fox Williams LLP) for the Respondents

Hearing date: 8 December 2020

Approved Judgment

Lord Justice Arnold

Introduction

1

This case involves a clash between rival users of the trade mark BENTLEY. The Claimants (“Bentley Clothing”), which are companies owned by Robert Lees and his sons Christopher and Richard, are the owner and exclusive licensee of three trade marks consisting of or comprising the word BENTLEY registered in respect of clothing and headgear (“the Trade Marks”), the earliest of which was registered in 1982. Bentley Clothing are the successors to a line of predecessor businesses, the first of which was founded by a Gerald Bentley in 1962. The Defendant (“Bentley Motors”) is the well-known car manufacturer. It is the successor to a predecessor company which was founded by Walter Owen Bentley in 1919. It is common ground that Bentley Motors and its predecessor have since 1919 made extensive use of the trade mark BENTLEY in relation to motor cars, and as a result that trade mark has a substantial reputation. Bentley Motors has sold clothing under signs consisting of or comprising the word BENTLEY since about 1987. This has given rise to a number of disputes between the parties in various fora. In these proceedings Bentley Clothing contend that Bentley Motors has infringed the Trade Marks by selling clothing and headgear under the sign or signs shown below since November 2011 (six years before the date on which the claim form was issued).

2

The device which appears above the word BENTLEY is known as the “B-in-wings” device. Bentley Motors has used the B-in-wings device for many years. Bentley Clothing has no objection to its use, including on clothing and headgear.

3

His Honour Judge Hacon sitting as a Judge of the High Court decided, for the reasons given in his judgment dated 1 November 2019 [2019] EWHC 2925 (Ch), that Bentley Motors had infringed the Trade Marks. Bentley Motors now appeals against that decision partly with the permission of the judge and partly with permission granted by Floyd LJ.

4

It is important to note before proceeding further that one of the main defences to infringement advanced by Bentley Motors before the judge was a defence of honest concurrent use. The judge rejected that defence for the reasons given in his judgment at [85]–[160]. Bentley Motors was refused permission to appeal against that conclusion both by the judge and by Floyd LJ. I shall return to the significance of this below.

The Trade Marks

5

Bentley Clothing relies upon the following Trade Marks, all of which are registered in respect of goods in Class 25:

Number

Mark

Goods

Filing Date

1180215

Articles of knitted clothing; shirts and waistcoats

12 Aug 1982

2177779A

BENTLEY

Clothing; headgear; articles of knitted clothing, knitwear, jumpers, pullovers, cardigans, sweaters, shirts, sweatshirts, T-shirts, polo shirts, coats, jackets, top coats, overcoats, raincoats, car coats, waistcoats, blousons, articles of clothing for casual wear, shorts, articles of sports clothing, blouses, hats, caps, scarves, gloves, anoraks

22 Sep 1998

2505233

BENTLEY

Clothing and headgear

22 Dec 2008

6

The judge referred to these as “the Lozenge Mark”, “the Series Mark” and “the Word Mark” respectively, and I will follow his example. The Series Mark is so called because it consists of a series of two trade marks. These are to be treated as separate trade marks registered under a single reference number: see Comic Enterprises Ltd v Twentieth Century Fox Film Corp [2016] EWCA Civ 455, [2016] FSR 31.

Bentley Clothing's use of the Trade Marks

7

Bentley Clothing does not contend that any of the Trade Marks has an enhanced reputation by reason of the use made of them. No doubt for that reason, the judge did not make any detailed findings concerning such use, whether by Bentley Clothing or by their predecessors. He merely noted at [70] that neither Bentley Clothing nor its predecessors had used the Trade Marks on a large scale. He also recorded at [121], [128] and [131] that Bentley Motors had unsuccessfully applied to revoke the Trade Marks for non-use.

Bentley Motors' use of signs consisting of or comprising the word BENTLEY in relation to clothing and headgear

8

The judge made detailed findings of fact concerning Bentley Motors' use of signs consisting of or comprising the word BENTLEY in relation to clothing and headgear since 1987. These may be summarised as follows.

9

Bentley Motors first sold clothing in about 1987. A catalogue of that date entitled The Rolls Royce Collection/The Bentley Selection comes from the period when Bentley Motors was part of the same group as Rolls-Royce Motor Cars Ltd. The part of the catalogue headed The Bentley Selection advertised, among other goods, an anorak, two silk ties with differing motifs, a lightweight jacket and a cashmere scarf. All of the items appear to have been intended to be worn as men's clothing. The only sign affixed to the goods themselves was the B-in-wings device, but each page of the catalogue was emblazoned with the words “The Bentley Selection”. The judge held that this constituted use of the sign BENTLEY in relation to the relevant articles of clothing, and there is no challenge to that conclusion. Although the specific catalogue in evidence did not include any caps, the judge found that Bentley Motors had also sold caps in the same manner prior to 31 October 1994. Bentley Motors continued to sell clothing in this way until 2000.

10

In 2000 a catalogue of Bentley Motors merchandise was published under the title The Bentley Collection which included a slightly expanded range of men's clothing and headgear, and a ladies' scarf. The B-in-wings device appeared on the front along with the word BENTLEY and below that in much smaller typeface the word MOTORS. As before, the only mark affixed to the goods themselves was the B-in-wings device.

11

In the same year, 2000, Bentley Motors distributed another catalogue under the title The Bentley Collection Return to Le Mans. The clothing and headgear in this catalogue was marked with the B-in-wings device and below it the words TEAM BENTLEY.

12

In 2002 Bentley Motors issued a catalogue entitled The Bentley Collection which for the first time showed clothing and headgear bearing the sign or combination of signs set out under paragraph 1 above. (There was one exception, a baseball cap which bore the sign BENTLEY alone on the front of the cap.)

13

In the last quarter of 2006 a website went live showcasing the BENTLEY COLLECTION of goods which included clothing and headgear. Again, this was sold under the sign or combination of signs set out above. From 2006 Bentley Motors expanded its range of clothing and headgear to include items for children and more for women, although total sales did not increase significantly and remained modest.

14

In December 2007 Bentley Motors produced a beanie hat and a scarf bearing the sign BENTLEY alone, small quantities of which were sold during the relevant period. This was accepted by Bentley Motors to be an infringement subject to the two defences mentioned below.

15

An example of the allegedly infringing use of the sign or signs shown under paragraph 1 above is depicted below.

The legal framework

16

Bentley Clothing's infringement allegations relate to periods covered by (i) European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks and (ii) its replacement, European Parliament and Council Directive 2015/2436/EU of 16 December 2015. As explained below, one of Bentley Motors' defences arises out of the first trade mark directive, First Council Directive 89/104/EEC of 21 December 1988. There is no material difference between the relevant provisions of the three Directives, although they have been renumbered in Directive 2015/2436. It is convenient to address the issues on the appeal by reference to the provisions of Directive 2008/95, which are as follows:

Article 5

Rights conferred by a trade mark

1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;

(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.

4. Where, under the law of the Member State, the use of a sign under the conditions referred to in paragraph 1(b) or paragraph 2 could not be...

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    • Intellectual Property Enterprise Court
    • 18 January 2021
    ...of honest concurrent use by both his Honour and by Floyd LJ in the Court of Appeal: Bentley Motors Ltd v Bentley 1962 Ltd and Anor [2020] EWCA Civ 1726. 117 Counsel for the Claimant submitted that honest concurrent use has never been successfully asserted in a case where the alleged infrin......
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    ...that the burden of proving this lies on the defendant: see Supreme Petfoods at [147], [164] and Bentley 1962 Ltd v Bentley Motors Ltd [2020] EWCA Civ 1726, [2021] Bus LR 736 at [35]. As I discussed in those cases, this may be rationalised on the basis that, in double identity cases, there......
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    ...to take stock of the overall effect of the transitional provisions. As Arnold LJ explained in Bentley Motors Ltd v Bentley 1962 Ltd [2020] EWCA Civ 1726, transitional provisions come in a number of different forms. But there are a number of guiding principles. One of these is to provide fo......
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    ...Bentley Motors Limited [2019] EWHC 2925 (Ch) (where the defence failed at first instance and the issue did not arise on appeal: see [2020] EWCA Civ 1726 at [4], 95 There is doubt as to whether this defence is available in a case of s 10(2) infringement at all: see W3 v Easygroup [2018] EW......
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