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Bentley Motors Limited v (1) Bentley 1962 Limited (2) Brandlogic Limited
Factual and Procedural Background
This case concerns a dispute between two rival users of the trade mark BENTLEY. The Plaintiff ("Bentley Clothing") comprises companies owned by Robert Lees and his sons, who own and exclusively license three trade marks registered for clothing and headgear, the earliest registration dating back to 1982. Bentley Clothing traces its origins to a predecessor business founded in 1962. The Defendant ("Bentley Motors") is a well-known car manufacturer, successor to a company founded in 1919, which has used the BENTLEY trade mark extensively in relation to motor cars and has developed a substantial reputation. Bentley Motors has also sold clothing bearing the BENTLEY mark since about 1987. Bentley Clothing alleges that Bentley Motors infringed its trade marks by selling clothing and headgear under the BENTLEY sign since November 2011.
The "B-in-wings" device, used by Bentley Motors for many years, is not contested by Bentley Clothing, including its use on clothing and headgear. The High Court judge found in 2019 that Bentley Motors infringed the Plaintiff's trade marks. Bentley Motors appeals this decision, with partial permission granted by the trial judge and Floyd LJ. A key defence of honest concurrent use was rejected by the trial judge, and Bentley Motors was refused permission to appeal that finding.
Legal Issues Presented
- Whether Bentley Motors' use of signs consisting of or comprising the word BENTLEY in relation to clothing and headgear constituted infringement of Bentley Clothing's registered trade marks under Article 5(1)(a) or Article 5(1)(b) of Directive 2008/95/EC.
- Whether the use by Bentley Motors was of one combined sign (the B-in-wings device plus the word BENTLEY) or two distinct signs, affecting the applicable infringement test.
- The applicability and scope of defences raised by Bentley Motors, including honest concurrent use and the transitional provision under Schedule 3 paragraph 4 of the Trade Marks Act 1994.
- The interpretation and scope of the transitional defence under Schedule 3 paragraph 4 of the 1994 Act regarding continued use of signs registered under the previous 1938 Act.
- Whether the trial judge erred in not addressing the condition that the use must affect or be liable to affect one of the functions of the trade mark (condition (vi)) for infringement under Article 5(1)(a).
Arguments of the Parties
The opinion does not contain a detailed account of the parties' legal arguments.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Comic Enterprises Ltd v Twentieth Century Fox Film Corp [2016] EWCA Civ 455, [2016] FSR 31 | Treatment of series marks registered under a single reference number as separate trade marks. | The court adopted the classification of the Plaintiff's Series Mark as consisting of two separate trade marks under a single registration number. |
| Supreme Petfoods Ltd v Henry Bell & Co (Grantham) Ltd [2015] EWHC 256 (Ch), [2015] RPC 22 | Burden of proof regarding whether use affects functions of the trade mark (condition (vi)) under Article 5(1)(a). | The court followed this authority in concluding that the trade mark proprietor bears the burden to prove conditions (i), (ii), (iv), and (v), while the defendant bears the burden to prove consent under (iii). The burden regarding condition (vi) is unclear but the court adopted the view that the defendant must prove that the use does not affect trade mark functions. |
| Budejovick Budvar NP v Anheuser-Busch Inc [2011] ECR I-8701 (C-482/09) | Recognition of honest concurrent use as a defence to infringement and its relation to the origin function of a trade mark. | The court recognised that honest concurrent use prevents an adverse effect on the origin function and thus provides a defence to infringement. |
| LTJ Diffusion SA v Sadas [2003] ECR I-2799 (C-291/00) | Strict test for identity of signs under Article 5(1)(a) and the presumption of likelihood of confusion. | Referenced by Bentley Motors' counsel to support the strict identity test and the assumption of likelihood of confusion without need for proof. |
Court's Reasoning and Analysis
The court began by examining whether Bentley Motors' use constituted one combined sign or two distinct signs. The trial judge found that the average consumer would perceive the word BENTLEY and the B-in-wings device as two separate signs, based on their long history of separate use and Bentley Motors' own treatment of the signs prior to 2014. This finding was upheld as a permissible evaluative judgment with no error of principle identified.
Applying the Court of Justice of the European Union's (CJEU) established six conditions for infringement under Article 5(1)(a), the court considered whether all conditions were met. Bentley Motors did not dispute infringement if the use was of two distinct signs, except to rely on the defence of honest concurrent use. The court noted that the burden of proof for condition (vi) — that the use must affect or be liable to affect a trade mark function — is unresolved in EU law but adopted the view that the defendant bears the burden to prove no such effect.
The court emphasized that Bentley Motors' only argument that condition (vi) was not satisfied was its honest concurrent use defence, which the trial judge had rejected. Permission to appeal that rejection was refused, so Bentley Motors could not rely on other reasons for condition (vi) not being met.
Regarding the transitional defence under Schedule 3 paragraph 4 of the Trade Marks Act 1994, the court considered the scope of "continued use" and the appropriate level of granularity. The judge had allowed Bentley Motors to continue use in relation to certain clothing items and promotional literature, but not broadly across all clothing types or manners of use. Bentley Motors sought to expand this defence to a wider range of clothing and uses, but the court rejected this, finding that such an extension would undermine the legitimate expectations of the trade mark proprietor and introduce unacceptable uncertainty.
The court also noted that Bentley Motors' argument that the B-in-wings device was exclusively associated with it, and that use of BENTLEY alongside it did not affect the trade mark's functions, was inconsistent with the trial judge's findings on the absence of honest concurrent use and the policy of incremental encroachment on the Plaintiff's goodwill.
Consequently, the court found no error in the trial judge's reasoning or conclusions and saw no need to consider alternative grounds of infringement or the Respondent's notice.
Holding and Implications
The court DISMISSED the appeal by Bentley Motors.
The direct effect is that the trial judge's findings that Bentley Motors infringed Bentley Clothing's registered trade marks stand, including the rejection of the honest concurrent use defence and the limited scope of the transitional defence. No broader legal precedent was established beyond affirming the trial judge's evaluative assessments and legal interpretations in this case.
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