UK IPO puts the brakes on Bentley Trade Mark invalidity claim
A hearing officer at the UK Intellectual Property Office (UK IPO) has dismissed a claim by luxury automotive brand Bentley Motors which sought to invalidate trade mark registrations belonging to clothing brand Bentley.
The dispute seemingly arose after Bentley objected to Bentley Motors' use of the "Bentley" in respect of various items of clothing and related accessories, a market into which the automotive brand was seeking to expand.
The clothing company claimed that Bentley Motors had no rights to a trade mark monopoly in respect of those particular classes of goods, while it (Bentley clothing) had had a registered mark in Class 25 (clothing, footwear & headgear) since 2009. The clothing company made various overtures to Bentley Motors seeking to resolve the dispute but were reluctant to engage in potentially costly trade mark infringement litigation against Bentley Motors, which is part of the giant Volkswagen Audi Group.
Conversely, in late 2015, Bentley Motors made its own application to invalidate the clothing company's registered trade mark for Bentley, alleging that the goods covered by Bentley's registration were confusingly similar to those covered by Bentley Motors' Community Trade Mark EU3925187 in classes 14 for "jewellery and watches" and 18 for "leather and imitations of leather and goods made therefrom; bags, holdalls, wallets, purses."
Bentley Motors claimed that since 1920 it had used its mark on a range of these good as well as on clothing, and that in 2008 when Bentley registered its mark in Class 25, the automotive company had established "an exceptional reputation in relation to the design and manufacture of high-end luxury motor cars" and this extended to a high level of goodwill over the whole range of products to which (it argued) it had applied its brand.
Bentley's counter argument was that Bentley Motors had no established goodwill for the ranges of other products and had acquiesced to its use of the Bentley name on clothing since 1962 when the Manchester-based clothing company was established.
The hearing officer found that Bentley Motors had failed to adduce sufficient evidence to show that it had used its mark across the range of goods relied upon in a manner sufficient to give it the goodwill and the protection it claimed, although he rejected the acquiescence argument.
Bentley Motors also sought to rely on s.5(3) of the Trade Marks Act 1994 saying that the 'Bentley' mark took unfair advantage, without good cause, of the reputation of Bentley Motors' trademark for motor cars and car-related goods in class 12.
The IPO held that the use of the mark "Bentley" by Bentley clothing (which it accepted was made out) did not take unfair advantage of the automotive company's reputation in its own mark.
The owner of Bentley clothing has said that his lawyers are now considering next steps. It will be interesting to see what impact this outcome has on the wider battle between these two companies. For example, will Bentley clothing be emboldened to embark
on an infringement claim, or will it in turn seek to invalidate Bentley Motors' mark(s) in respect of any goods where the use of the mark has been called into question in this decision? Alternatively, the relative disparity in resources between the two businesses may remain the most significant factor.
Posted on: 20/03/2017
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