A bitter battle over the Bentley trademark sheds light on the well-established principle that if you do not use your mark (in connection with all of the goods you claim rights in), you will lose your mark in those classes. A trademark opposition proceeding filed by the British luxury automaker (“Bentley Motors”) in 2015 against Manchester-based Bentley clothing company (“Bentley Clothing”) has come to a close, with the more famous of the two parties taking a hit.
On the heels of Bentley Clothing filing to register the “Bentley” mark with the United Kingdom Intellectual Property Office (“UK IPO”) in June 2015, in two classes (25, which applies to clothing and accessories, and 35, which covers “retail and wholesale services connected with the sale of vehicles and parts and accessories therefor; retail and wholesale services connected with the sale of perfumes and cosmetics, optical apparatus, glasses, sunglasses, and accessories”), Bentley Motors filed to oppose the mark.
For the uninitiated: Before a trademark may be registered with the UK IPO (and the U.S. Patent and Trademark Office, as well), a number of requirements must be satisfied. For instance, the mark must be published for opposition, thereby giving any party who believes it may be damaged by registration of the mark the opportunity to file an opposition to registration.
According to Bentley Motors’ trademark opposition, which was filed in September 2015, the goods asserted within Bentley Clothing’s trademark application were “confusingly similar” to an array of goods in which it maintained trademark rights at the time. Specifically, the automaker cited a number of trademark registrations that it was awarded prior to the filing of Bentley Clothing’s application for the “Bentley” name that covers an array of goods, including bags and jewelry, among others. Moreover, Bentley Motors argued that while it does not have a specific registration for garments, it has used the “Bentley” mark in connection with garments and accessories since 1920.
Unpersuaded by Bentley Motors’ argument that it maintains rights in the “Bentley” trademark in connection with garments, UK IPO trademark hearing officer George W. Salthouse held that the company did not produce sufficient evidence to support its asserts. In fact, Salthouse stated in his decision that Bentley Motors failed to provide any evidence of use of the “Bentley” name in connection with garments and the sale of garments.
As such, Bentley Clothing’s trademark application has been left intact and given that the opposition period formally ended in late September 2015, it is slated for registration with the UK IPO in the near future. As for Bentley Clothing, however, this is hardly the end. Christopher Lees, who has served as the director of Bentley Clothing since 1996, told the World IP Review, “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.”