Decision Nº O/063/16 from Intellectual Property Office - (Trade market), 8 February 2016

CourtIntellectual Property Office (United Kingdom)
JudgeMr O Morris
Registration NumberUK00003062116
O-063-16
IN THE MATTER OF TRADE MARK APPLICATION 3062116
BY BRANDLOGIC LTD
TO REGISTER THE FOLLOWING TRADE MARK IN CLASS 25:
BENTLEY 1962
AND
OPPOSITION THERETO (NO. 403060) BY
BENTLEY MOTORS LIMITED
Background and pleadings
1. These opposition proceedings concern whether the trade mark BENTLEY 1962
should be registered for clothing, footwear and headgearin class 25. The applicant
is Brandlogic Ltd, who filed the mark on 30 June 2014. The mark was subsequently
published for opposition purposes on 15 August 2014.
2. The opponent is Bentley Motors Limited. Its opposition is based on grounds under
sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994 (the Act). It relies on a
number of earlier marks (I will set them out later), all of which consist of the word
BENTLEY. Under section 5(4)(a) the opponent relies on the use of the sign BENTLEY
since 1920. The applicant filed a counterstatement denying the grounds of opposition
and putting the opponent to proof of use.
3. Both sides are legally represented. The opponent is represented by Eversheds, the
applicant by Mewburn Ellis. Both sides filed evidence. A hearing took place before me
on 6 November 2015 at which Ms Charlotte Scott, of counsel, instructed by Eversheds,
represented the opponent. The applicant did not attend the hearing, but it did file some
written submissions in lieu of attendance.
The evidence
4. I will come back to the detail of the evidence later. For the time being, I set out
below who the witnesses are and what, in brief, they have given evidence about.
For the opponent
5. Ms Justine Pridding, the opponent’s corporate counsel. She gives evidence about
the use of BENTLEY by the opponent. I will not need to come back to most of what
she states because it is abundantly clear from her evidence that the BENTLEY mark
is a longstanding and prestigious one in the field of motorcars. What I will come back
to in more detail is Ms Pridding’s evidence about the sales of merchandise and
accessories and, also, the evidence she gives about the applicant and its business.
For the applicant
6. Ms Jacqueline Pang, a trade mark attorney at Mewburn Ellis. She gives evidence
about the use of the word BENTLEY by third parties.
7. Mr Roger Grimshaw, a partner and trade mark attorney at Mewburn Ellis. He gives
evidence about various trade marks and company names that contain the word
BENTLEY. He also gives evidence about the number of people that have BENTLEY
as a surname and, also, place names that contain that word.
8. Mr Christopher Lees, a director of the applicant. He gives evidence about the
applicant’s business and, also, a related company. He also gives evidence about
meetings/discussions which took place with the opponent at various times between
1998 and 2009.
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For the opponent, in reply
9. Ms Pridding gives evidence mainly seeking to criticise the evidence of the applicant.
However, she also gives evidence about the meetings/discussions which have taken
place with the applicant and/or its related company.
10. Mr Andrew Armitage, the opponent’s general counsel and company secretary.
His evidence is about the meetings/discussions that took place with the applicant
and/or its related company.
11. Ms Kate Ellis, principal associate and trade mark attorney at Eversheds LLP. She
gives evidence in reply to that of Mr Grimshaw and Ms Pang.
Section 5(4)(a) passing off
12. Section 5(4)(a) of the Act reads:
“A trade mark shall not be registered if, or to the extent that, its use in the United
Kingdom is liable to be prevented
(a) by virtue of any rule of law (in particular, the law of passing off)
protecting an unregistered trade mark or other sign used in the course
of trade, or
(b)...
A person thus entitled to prevent the use of a trade mark is referred to in
this Act as the proprietor of “an earlier right” in relation to the trade mark.”
13. Halsbury’s Laws of England (4th Edition) Vol. 48 (1995 reissue) at paragraph 165
provides the following analysis of the law of passing-off. The analysis is based on
guidance given in the speeches in the House of Lords in Reckitt & Colman Products
Ltd v. Borden Inc. [1990] R.P.C. 341 and Erven Warnink BV v. J. Townend & Sons
(Hull) Ltd [1979] AC 731. It is (with footnotes omitted) as follows:
“The necessary elements of the action for passing off have been restated by
the House of Lords as being three in number:
(1) that the plaintiff’s goods or services have acquired a goodwill or reputation
in the market and are known by some distinguishing feature;
(2) that there is a misrepresentation by the defendant (whether or not
intentional) leading or likely to lead the public to believe that the goods or
services offered by the defendant are goods or services of the plaintiff; and
(3) that the plaintiff has suffered or is likely to suffer damage as a result of the
erroneous belief engendered by the defendant’s misrepresentation.
The restatement of the elements of passing off in the form of this classical trinity
has been preferred as providing greater assistance in analysis and decision
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