Bentley Motors Limited v (1) Bentley 1962 Limited (2) Brandlogic Limited

Where an identical sign is used for identical goods, infringement requires use liable to affect a trade mark function. If the defendant’s only pleaded answer to that requirement is honest concurrent use, it cannot advance a different case on appeal after that defence has been finally rejected.

A transitional right to continue previously lawful use must be construed by reference to its wording, context and purpose. It protects continuity in the relevant categories of goods and manner of use. It does not confer an unrestricted entitlement to expand into other goods serving the same commercial purpose or into materially different forms of use.

The respondents owned or exclusively licensed three BENTLEY trade marks registered for clothing and headgear. The appellant motor manufacturer had sold merchandise under BENTLEY-related signs and challenged the conclusion that its later use infringed those marks.

The High Court, in [2019] EWHC 2925 (Ch), found infringement. It held that consumers perceived the B-in-wings device and BENTLEY as two signs, rejected honest concurrent use, and confined the transitional defence to promotional literature for jackets, silk ties, caps and scarves. Permission to appeal the rejection of honest concurrent use was refused.

The appeal concerned whether two signs had been used, whether the use affected a trade mark function, and the proper scope of continued use protected by the transitional provision.

1. Appeal dismissed. Arnold LJ, with whom Marcus Smith J and Lewison LJ agreed, held that the judge had committed no error of principle in finding that the average consumer perceived the B-in-wings device and BENTLEY as two distinct signs used simultaneously. That evaluative conclusion was open to him and was correct.

2. Prima facie infringement under article 5(1)(a) requires use in the relevant territory, in the course of trade, without consent, of a sign identical to the mark, for identical goods or services, which affects or is liable to affect a function of the mark. The appellant’s pleaded case disputed the functional condition only through honest concurrent use. The judge rejected that defence, and permission to appeal that rejection had been refused. The appellant could not introduce a different functional case on appeal.

3. The alternative argument also failed. The judge’s finding that the B-in-wings device had a substantial reputation for cars did not establish its exclusive association with the appellant’s clothing. Nor did it establish that BENTLEY, when used with that device on clothing, was exclusively associated with the appellant. The argument was also inconsistent with the findings of deliberate incremental encroachment upon the respondents’ clothing goodwill.

4. Transitional provisions are construed by ordinary principles, having regard to wording, context and purpose. Continuity of law and legitimate expectations provide context but do not determine the statutory result. The protected “continued use” under article 5(4) and Schedule 3 paragraph 4 must be assessed both by the goods or services concerned and by the manner of use.

5. The defence did not extend to every kind of clothing serving the same merchandising purpose. Such a category would be overly broad, uncertain and inconsistent with the enlarged rights and legitimate expectations of the proprietor. Nor did earlier use of BENTLEY in promotional literature permit all later uses, including affixing the sign to goods or swing tags. No basis existed for disturbing the judge’s restriction of the defence to promotional literature for jackets, silk ties, caps and scarves.

1. Court of Appeal (Civil Division): The appeal was dismissed unanimously in [2020] EWCA Civ 1726. The finding of infringement and the confined scope of the transitional defence were upheld.
2. High Court, Intellectual Property List: His Honour Judge Hacon held in [2019] EWHC 2925 (Ch) that the appellant had infringed the respondents’ trade marks. He rejected honest concurrent use and limited the Schedule 3 paragraph 4 defence to specified goods advertised through promotional literature.