Case law: Family business’s registered trade mark stops car giant’s use of mark

Small and medium-sized businesses should not be afraid to engage with larger businesses which infringe their registered trade marks, as registration of their mark puts them in a strong position, a recent ruling makes clear.

In a recent ‘David and Goliath’ case, a family company called Bentley Clothing registered its trade mark BENTLEY in Class 25, which includes clothing, in 1982. When luxury car-maker Bentley Motors started using the Bentley mark on a range of clothing (including clothing worn by staff in Bentley dealerships), Bentley Clothing approached the car-maker and spent several years trying to negotiate a deal under which it would give it a license to use its mark in return for licence fees.

When negotiations failed, Bentley Motors applied to the UK Intellectual Property Office to cancel the BENTLEY trade mark. This failed, and Bentley Clothing brought a legal action against Bentley Motors for trade mark infringement.

Bentley Motors argued that the use of the mark on its clothing did not infringe the BENTLEY trade mark; and even if it did, the defence of ‘honest concurrent use’ applied, because its use of the mark did not unfairly prejudice the family company’s rights. Indeed, it argued that Bentley Clothing would benefit if the public believed its clothing was associated with its global business.

The family company said Bentley Motors had no intention of respecting its rights, and had made a conscious decision to gradually increase the prominence of the mark on its clothing, in breach of the company’s rights, hoping Bentley Clothing would not be provoked into taking legal action.

The court rejected Bentley Motors’ arguments and ruled in favour of the clothing company. It agreed its behaviour amounted to ‘a steady encroachment on Bentley Clothing’s goodwill ...’ and was ‘… consistent with an intent to clear away Bentley Clothing’s right to protect the BENTLEY mark for clothing and headgear and ultimately to extinguish Bentley Clothing’s right altogether’.

Bentley Motors now faces the prospect of having to withdraw and rebrand its clothing range, including staff livery.

Operative date

• Now

Recommendation

• Small and medium-sized businesses - backed by professional advice – should engage with larger businesses which infringe their registered trade marks, as registration of their mark puts them in a strong position. A larger business will often be prepared to pay to license a smaller business’s trade mark - and will lose out if they try to ride roughshod over the smaller business’s rights.

Case ref: Bentley 1962 Ltd and another v Bentley Motors Ltd [2019] EWHC 2925