On 1 November 2019, Judge Richard Hacon in the High Court finally settled a 20-year long dispute between one of the world’s most prestigious and recognizable car brands, and a small Manchester based UK clothing company.
The background of this case is as follows. Since circa 1987, the Defendant, Bentley Motors Limited (“Bentley Motors”), has been extending use of their famous ‘B-in-Wings’ Trade Mark to clothing and clothing accessories. The Claimant, Bentley 1962 Ltd (“Bentley Clothing”), a UK based manufacturer and retailer of clothing, began selling clothing under the BENTLEY Trade Mark in 1962. The two sellers coexisted without apparent contact until 1998, when Bentley Clothing approached Bentley Motors to offer a licence for the use of their Trade Mark. The terms of the licence were not agreed, and talks broke down.
The situation escalated in the early 2000’s when Bentley Motors began using their ‘B-in-Wings’ Trade Mark in conjunction with the word ‘Bentley’ (“the Combination Mark”) on clothing and clothing accessories. Further contact was made between the parties but to no satisfactory conclusion. Over the course of the next few years, Bentley Motors increased their use of the Combination Mark on clothing, despite being on notice of Bentley Clothing’s rights in, and use of, their BENTLEY Trade Mark in the same marketplace. Between 2005 and 2017 the two parties faced off numerous times before the EU and UK Intellectual Property Offices. Despite the length and cost of the proceedings, Bentley Clothing could not reach an agreement with their heavyweight opponent, and as a consequence, Bentley Clothing were left with no other option but to issue High Court proceedings against Bentley Motors for Trade Mark infringement. The result being a success for Bentley Clothing in its allegation of infringement (with damages and costs to be established at a later date).
This case highlights the potential dangers of brand extension from one marketplace; where the proprietor’s Trade Mark is incredibly distinctive and well-known, into a new marketplace, where the average consumer may not recognize that the relevant goods are associated with that particular proprietor. The effect being potential confusion in the market, as shown in this present case. Bentley Motors could be forgiven for thinking that their brand was too powerful to ever be challenged, even in a commercially distant market from the one that they are currently associated with. The long and slow encroachment by Bentley Motors into the clothing sector, despite being on notice of the existence of Bentley Clothing’s prior rights, seems to demonstrate a reckless arrogance. This loss for Bentley Motors shows that even large, reputable Trade Mark proprietors must approach brand extension with caution. Stepping out of an established market sector into a new area comes with risks.
The risks associated with brand extension can be mitigated with careful and considered research into the landscape of the relevant new market (Trade Mark registries and simple online searches are a good place to start), and being open to a meaningful discussion with competitors at a business to business level when a potential for conflict is spotted, is paramount in avoiding lengthy battles. In this case, if the discussions between the parties had not been allowed to break down, and if Bentley Motors had taken seriously the protection afforded by Bentley Clothing’s Trade Marks, it seems very likely that this dispute could have been settled long before it reached the High Court.
The High Court’s Decision can be appealed, and it will be interesting the see if Bentley Motors will continue the fight. Whether it’s sports or Intellectual Property, the press and the public love a good underdog story, and this one appears to be no different.
Should you be interested in seeking advice on expanding the use of your Trade Mark, please contact us, and our highly experienced team of Trade Mark Attorneys at Albright IP will be pleased to advise you further.