Decision Nº O/117/17 from Intellectual Property Office - (Trade market), 15 March 2017
| Judge | Mr G Salthouse |
| Administrative Decision Number | O/117/17 |
| Registration Number | UK00002505233 |
| Date | 15 March 2017 |
| Court | Intellectual Property Office (United Kingdom) |
O-117-17
IN THE MATTER OF REGISTRATION No. 2505233
STANDING IN THE NAME OF
BENTLEY 1962 LIMITED
AND
IN THE MATTER OF A REQUEST FOR A DECLARATION
OF INVALIDITY THERETO UNDER No.501089
BY BENTLEY MOTORS LIMITED
2
BACKGROUND
1) The following trade mark is registered in the name of Bentley 1962 Limited (hereinafter
1962):
Mark
Number
Filing &
registration date
Class
Specification
BENTLEY
2505233
22.12.08
08.05.09
25
Clothing; footwear; headgear.
2) By an application dated 18 December 2015 Bentley Motors Limited (hereinafter BML)
applied for a declaration of invalidity in respect of this registration. The grounds are, in
summary:
a) BML is the registered proprietor of the following trade marks:
Mark
Number
Filing &
registration
date
Class
Specifications relied upon
BENTLEY
EU
3925187
15.07.04
13.05.08
12
Motor vehicles and parts and fittings therefor; snow
chains for motor vehicle wheels; tyres for motor
vehicles; solid rubber tyres for motor vehicle
wheels; pneumatic tyres; alloy wheels for motor
vehicles; mud flaps for motor vehicles; rugs and
carpets for motor vehicles; steering wheels for
motor vehicles; car safety seats for children; picnic
tables for motor vehicles; vanity mirrors for motor
vehicles; tread plates for motor vehicles; luggage
nets for motor vehicles; motor vehicle horns;
surrounds for headlamps; reversing alarms for
vehicles; ski carriers for use on motor vehicles;
brake components for motor vehicles; gear lever
knobs for motor vehicles; ventilation grilles; wood
panels for motor vehicles; parts and fittings for all
the aforesaid goods.
14
Jewellery, watches.
3
18
Leather and imitations of leather and goods made
therefrom; bags, holdalls, wallets, purses.
BENTLEY
UK
1060684
24.03.76
24.03.76
7
Internal combustion engines and parts thereof
12
Parts and fittings included in Class 12 for motor
cars; Motor cars and chassis for motor cars.
Internal combustion engines and parts thereof, all
for land vehicles.
b) BML contends that the items shown in bold in EU3925187 are similar to the goods
for which the mark in suit is registered. It contends that as the marks are identical
the mark in suit offends against Section 5(2)(a) of the Act.
c) BML contends that as of 22 December 2008 it had acquired an exceptional
reputation in relation to the design and manufacture of high-end luxury motor cars.
Use of the mark in suit would enable 1962 to benefit from the attractive image that
BML had built up in the mark BENTLEY and therefore free-ride on the effort that
BML had expended in promoting its BENTLEY mark. If the goods sold by 1962
were of poor quality it would damage the reputation of BML. Use of the mark in suit
would erode the distinctiveness of BML’s BENTLEY mark. I note that the TM26
form states that BML relies upon all of the goods and services for which it mark EU
3925187 is registered but does not refer to any goods or services other than luxury
vehicles in its comments. BML contends that the mark in suit therefore offends
against Section 5(3) of the Act.
d) BML contends that it has used the mark BENTLEY in respect of, motor vehicles;
jewellery; watches; clocks; clothing; gloves; scarfes; handbags; wallets; cufflinks;
ties; goggles; model cars; toys; games; paperweights; writing implements;
notepads; candles; fragrances; skis; mobile phones; eyewear; furniture; key-rings;
mugs; lanyards since 1920 and by 22 December 2008 had a very high level of
goodwill in the BENTLEY mark. BML contends that use of the mark in suit will
offend against section 5(4)(a) of the Act.
3) 1962 provided a counterstatement, dated 22 February 2016, in which it denies that
BML has any reputation or goodwill in the mark BENTLEY in regard to the goods and
services listed and puts BML to strict proof of use. It also pleaded that BML has
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