Bentley Motors loses trademark action

Crewe-based luxury car company Bentley Motors has lost a trademark invalidity action against Manchester clothing company Bentley.

Clothing brand Bentley, launched in 1962, registered the trademark Bentley at the UK Intellectual Property Office in 2009, covering class 25 for clothing, footwear and headgear.

Bentley Motors applied for a declaration of invalidity in 2015, alleging the goods covered by Bentley’s mark were too similar to those protected by the car firm’s EU 3925187 trademark.

The motor company claimed that as of December 2008 – when Bentley’s mark was applied for – Bentley Motors had “acquired an exceptional reputation in relation to the design and manufacture of high-end luxury motor cars”.

It also said that it had used the ‘Bentley’ mark for jewellery, handbags and clothing since 1920, and that by 2008 it had a “very high level” of goodwill in the mark.

It relied on EU 3925187 for “jewellery and watches” in class 14 and “leather and imitations of leather and goods made therefrom; bags, holdalls, wallets, purses” in class 18.

Bentley provided a counter-statement in February 2016, arguing that Bentley Motors did not have any reputation or goodwill in the goods and services listed.

It also said Bentley Motors had agreed use of the mark ‘Bentley’ on clothing.

In its decision IPO said that Bentley Motors had failed to provide any evidence of use of its mark for any of the goods relied on.

George Salthouse, hearing officer, added: “I do not accept that Bentley Motors have met the burden upon them to show that they have used their mark … during the relevant period.”

Bentley Motors also sought to rely on invalidity based on section 5(3) of the Trade Marks Act 1994, arguing that the ‘Bentley’ mark took unfair advantage of the reputation of Bentley Motors’ trademark for motor cars and car-related goods in class 12.

Although the IPO agreed that Bentley Motors had met the proof of use requirement, it held that use of the mark by Bentley would not take unfair advantage.

However, Bentley’s argument of acquiescence failed.

Christopher Lees, director at Manchester-based clothing company Bentley, said on the World Intellectual Property Review website: “My lawyers are now considering next steps. This battle has been so extreme, involving the CEOs of both Volkswagen and Bentley Motors, that a film producer has asked to make a film about it.”

 

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