Bentley 1962 Ltd & Anor v Bentley Motors Ltd

For trade mark infringement, whether a composite sign contains a separately used word mark depends on the perception of the average consumer, assessed in the relevant period and in the context of actual use. Longstanding separate use of the components may lead consumers to perceive them as distinct signs used together.

Under paragraph 4 of Schedule 3 to the Trade Marks Act 1994, transitional protection permits continuation of the pre-1994 use, but does not permit materially new forms of use, goods or presentation. Honest concurrent use requires longstanding honest coexistence and does not protect conduct which deliberately exacerbates confusion or encroaches upon another trader’s goodwill.

Bentley 1962 Ltd owned UK trade marks comprising or including the word BENTLEY for clothing and headgear. Brandlogic Ltd claimed to be its exclusive licensee. Bentley Motors used a sign combining its B-in-Wings device with the word BENTLEY on clothing and headgear.

The claim concerned infringement under sections 10(1) and 10(2) of the Trade Marks Act 1994, together with defences based on transitional provisions, honest concurrent use and the alleged absence of an exclusive licence. The central issues were whether the Combination Sign was perceived as one sign or two, whether there was a likelihood of confusion, and whether either defence applied.

1. Infringement. The Combination Sign was perceived by the average consumer as two distinct signs used together. The B-in-Wings device and the word BENTLEY had long been used separately, and Bentley Motors’ own branding materials and licences supported that perception. Use of the Combination Sign therefore constituted use of BENTLEY and infringed the Word and Series Marks under section 10(1) of the Trade Marks Act 1994 (paras [51]-[60]).

2. Alternatively, there was a likelihood of confusion under section 10(2). The word BENTLEY was the dominant component of the Combination Sign. The assessment had to proceed on the basis of notional and fair use of the registered marks across their specifications, regardless of the claimant’s actual scale of trading. The court applied the principles summarised in Sky plc v Skykick UK Ltd and Maier v ASOS Plc (paras [61]-[71]).

3. Transitional defence. Paragraph 4 of Schedule 3 to the 1994 Act permitted Bentley Motors to continue selling the types of garments sold before November 1994 under the banner The Bentley Selection. It did not permit expansion into new types of clothing or headgear, or use of BENTLEY on the goods, tags or attached material. The defence was therefore limited to continuation of the pre-existing use (paras [72]-[84]).

4. Honest concurrent use. Honest concurrent use may provide a defence where long coexistence means that the mark denotes goods from either of two undertakings. The defendant must not, however, take steps which exacerbate inevitable confusion or encroach on the claimant’s goodwill. The court considered the duration and honesty of the coexistence, knowledge of the claimant’s rights, the defendant’s conduct after notice, and expansion towards the claimant’s core business (paras [85]-[99]).

5. Bentley Motors’ use was initially honest, but its post-1998 conduct involved incremental increases in the prominence and scope of BENTLEY branding after it knew of Bentley Clothing’s business. That policy steadily encroached upon Bentley Clothing’s goodwill and was not honest concurrent use. The defence was unavailable by November 2011 and remained unavailable (paras [147]-[160]).

6. Exclusive licence. The 7 December 2010 agreement was best construed as an exclusive licence because Brandlogic was authorised, to the exclusion of 1962 Ltd and all others, to use and develop the relevant trade marks (paras [161]-[164]).

7. The claim succeeded in respect of the Series and Word Marks. The Lozenge Mark was not materially in issue in the final conclusion (para [165]).