 |
| Jane Lambert |
In his article, Manchester clothing firm wins trademark battle against luxury car firm of 4 Nov 2019 Michael Ribbeck mentioned that both sides in the widely reported trade mark dispute over the use of the BENTLEY mark for clothing are based in Northwest England. Bentley 1962 Ltd, which registered the BENTLEY mark for clothing, has its registered office is in Ashton-under-Lyne while the well-known motor manufacturer is in Crewe.
I have already written a note about this case in NIPC Law but, as most readers of that blog are specialist lawyers or patent or trade mark attorneys, I have been told that the article is a little heavy going for anybody else. As I have been asked about that case by businessmen and women and non-specialist lawyers I shall attempt to explain it here.
It is important to understand what a trade mark is and how it works. I have defined it as "a sign capable of distinguishing the goods or services of one supplier from the goods or services of others. " It serves two purposes. First, it is a guarantee of origin for consumers who want to be sure that the goods or services that they acquire come from a supplier that they know and trust. Secondly, it can be a focus for marketing. Consumers are informed of the nature and quality of a supplier's goods or services by reference to a recognizable sign.
Although trade marks had existed for many years before a system of registration was devised, it has been possible for businesses to register a distinctive sign as a trade mark for the goods that they supply since 1875. The first registered trade mark was the Bass brewery's combined triangle logo and word mark which was registered for pale ale in class 32 as UK trade mark #1 from 1 Jan 1876. It is still in force to this day.Although the law has changed quite a bit since then businesses still register marks for specified goods and/or services. If their application for registration is accepted they are given a unique registration number just as the brewery was all those years ago.
There are three ways in which a registered trade mark can be infringed:
- Supplying or marketing exactly the same goods or services for which the mark is registered under exactly the same sign as the registered mark;
- Supplying or marketing goods or services that are the same or similar to those for which the mark is registered under a sign that is the same or similar to the registered mark where, because of such similarity, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the registered trade mark; and
- Supplying or marketing goods or services that may or may not be the same as or similar to those that are specified for a registered mark with a reputation in the UK under a sign that is the same as or similar to such mark where the use of that sign will take unfair advantage of or be detrimental to the distinctive character of the registered mark.
The second way is a bit more nuanced. It is usually possible for two or more businesses in different industries to sell their goods under the same or similar sign without any danger of confusion in the market place. One only has to think of Mazda cars and Mazda light bulbs. But sometimes the similarity between signs and goods or services is too close for comfort and that is where the second ground comes into play.
Thirdly, there are some marks that are so well known that any product bearing the same or similar sign would amount to freeloading or derision. Imagine selling lavatory paper under a sign that is the same or similar to that of a well-known luxury goods manufacturer. Should there be a product recall, for instance, every stand-up comic in the land would feel he has a licence to poke fun at the unfortunate luxury goods supplier.
In the Bentley case, the clothing business had registered the word BENTLEY for clothing and headgear since 8 May 2009. It had also registered the sign to the left as a trade mark for "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" since 22 Sept 1998.
For many years Bentley Motors had sold clothing through a catalogue known as the "Bentley Collection". Later that company started to sell clothes under the winged "B" logo that appears above the radiator grille of its motor cars and even under the "BENTLEY" word mark. From about 2014 Bentley Motors marketed clothing under a winged "B" logo and "Bentley" word mark combination that appears below.
The clothing manufacturer did not object to the motor manufacturer's activities at first but as over the years, Bentley Motors became more aggressive. For example, Bentley Motors tried to know out the clothing company's registrations in proceedings before the British and EU Intellectual Property Offices in 2017. The clothing supplier then brought these proceedings in the High Court alleging that the winged "B" logo and word combination mark to the left infringed its trade marks mentioned above.The action came on before His Honour Judge Hacon who tried the action as a judge of the High Court in July and delivered judgment on 1 Nov 2019. Readers can find a transcript of his judgment at Bentley 1962 Ltd and another v Bentley Motors Ltd [2019] EWHC 2925 (Ch) (1 Nov 2019). Judge Hacon found that Bentley Motors had infringed the clothing company's BENTLEY word mark and the combined lozenge and word mark by marketing and selling clothing under the winged "B" and word mark combinations. He gave his reasons as follows.
First, he said that the average consumer would perceive the winged "B" and word mark combination as two separate marks and not just one. If that was the case, selling clothing under the BENTLEY sign was an absolute no-no. The judge noted that Bentley Motors had actually sold clothing under the BENTLEY word mark until 2014. Even now the winged "B" and "BENTLEY" word looked like they could be separate marks. The likelihood was that consumers probably thought that they still were.
Even if he was wrong on the first point, the judge thought that the combined winged "B" and word mark would infringe the clothing company's trade marks because the motor company sold clothing and headgear and the dominant feature of the defendant's sign was the word "BENTLEY". That similarity was enough to raise a likelihood of confusion. Folk might well associate the winged "B" and "BENTLEY" sign with the claimant. There was an argument over what was meant by the words "likelihood of confusion". The judge considered the case law and came down on the clothing company's side.
Bentley Motors argued that it had sold clothing from a catalogue for many years and that it ought to be allowed to do so under provisions in the Trade Mark Act 1994 that allowed activities that were lawful under the previous legislation to continue. Judge Hacon agreed but said that did not give it the right to mark such clothing with the BENTLEY mark or market it as BENTLEY clothing.
There is a defence in trade mark law called "honest concurrent user" which allows brands that have coexisted happily for many years to continue to do so. Bentley Motors argued that it was entitled to that defence. The judge considered how the motor company had expanded its activities in clothing little by little in the expectation that the clothing company would not want to make a fuss and eventually brought proceedings in the IPO to sweep away the clothing company's rights. He described it as "grandmother's footsteps" and not honest concurrent user.
Finally, the motor company attacked the informal contract by which the trade mark owner had granted the second claimant an exclusive licence to use its marks. The judge was not impressed by that either.
This may not be the end of the litigation. Bentley Motors may want to appeal this judgement. If so, it will need permission from Judge Hacon or the Court of Appeal to do so. The transcript does not say whether the defendant sought such permission from the judge but, if not, there is still time.
A final word about venue. This case was tried in London, which was the parties' right, but it could easily have taken place at the Manchester or Liverpool Civil Justice Centres had the parties so wished. Business and Property Courts were set up in Manchester, Liverpool and other big cities for that very purpose and big savings in parties. witnesses and lawyers' time and costs can be made by making use of those venues (see Launch of a Judicial Superhighway 17 July 2017). Mr Justice Snowdon sits regularly in Leeds, Liverpool, Manchester and Newcastle and he is assisted by experienced specialist circuit judges on both sides of the Pennines. Should an assigned or enterprise judge be required for a patent, registered design, registered Community design, semiconductor topography or plant varieties case the Patents Court Guide and Intellectual Property Enterprise Court Guide have always stated that the judges of those courts are ready and willing to sit outside London for the convenience of parties and witnesses and to save costs. Earlier this year Judge Melissa Clarke sat in Birmingham to hear APT Training & Consultancy Ltd and another v Birmingham & Solihull Mental Health NHS Trust [2019] EWHC 19 (IPEC) (9 Jan 2019). I wrote about it in Trade Marks: APT Training and Consultancy Ltd. and another v Birmingham & Solihull Mental Health NHS Trust 21 April 2019 NIPC Law.
Comments