Bentley Motors was back in court this week in connection with a two-decades-long battle over its right to use the “Bentley” name on clothing and accessories. Last year, the Volkswagen Group-owned luxury automaker suffered a striking defeat when the English High Court of Justice held that by making garments and accessories bearing the Bentley name, Bentley is running afoul of the rights held by Bentley Clothing, a small apparel company that has used the Bentley name in the United Kingdom for over 30 years.
Following a lengthy back-and-forth between Bentley Motors and Brandlogic, which came in the form of trademark registration and cancellation disputes, the Manchester-based corporate entity for Bentley Clothing, Brandlogic escalated the parties’ longstanding trademark battle by filing suit. At the heart of the fight: Bentley Motors’ allegedly unauthorized use of the “Bentley” name on its own line of clothing beginning the late 1980s, some 20 years after Bentley Clothing began operations.
Brandlogic argued in its trademark complaint that by creating, marketing, and selling its own line of apparel, Bentley Motors is running afoul of its registered trademark, which gives Brandlogic exclusive rights to use the “Bentley” name in connection with clothing and accessories, and “retail and wholesale services” of those products. Contrary to the British automaker’s argument that its sale of “clothing and headgear over many years has not led to any confusion” with Bentley Clothing, and that since it began selling clothing, its offerings “have remained fundamentally the same without any undue expansion towards the business of Bentley Clothing,” Judge Hacon of the English High Court of Justice sided with Brandlogic.
In a decision dated November 1, 2019, Judge Hacon held that since Bentley Motors first began selling clothing “in about 1987,” it has engaged in a dishonest pattern of “steadily encroaching on Bentley Clothing’s goodwill.” This is particularly true, according to the court, because if the maker of $200,000-plus cars had “conducted a trademark search and been properly advised” when it first began selling those products, “it would have been told that ‘Bentley’ could not be used for knitted clothing, shirts and waistcoats” given the existence of Brandlogic’s rights in the “Bentley” mark.
Pointing to evidence dating back to at least 2000, Judge Hacon asserted in his decision that Bentley Motors made “a conscious decision to develop the use of ‘Bentley’ in relation to their range of clothing and headgear such as to increase the prominence of that sign, but only in incremental stages … [in order] to extinguish Bentley Clothing’s rights … [and] in the hope that no one stage would provoke a reaction from Bentley Clothing.”
On the heels of the court’s decision, which determined that Bentley is on the hook for trademark infringement and that it could not be shielded by an “honest concurrent use” defense, and ordered the car company to not only pay damages to Brandlogic but more significantly, to refrain from using the “Bently” word mark on its own and in connection with its logo when it comes to clothing and headwear, Bentley Motors appealed.
In furtherance of its appeal, which was heard by the Court of Appeal on December 8, counsel for Bentley Motors argued, among other things, that it is not engaging in trademark infringement by using a combination of its name and its flying wings logo in class 25 (i.e., on clothing, hats, etc.). The court had previously determined that Bentley’s use of its name in conjunction with the logo would be perceived as “two distinct signs used simultaneously,” thereby, running afoul of Brandlogic’s rights in the “Bentley” word mark for use on clothing and hats in the United Kingdom.
Counsel for Bentley Clothing, Hugo Cuddigan QC, also told the Court of Appeal that Bentley Clothing had been “stamped out” by Bentley Motors’ dishonest actions, and as a result, “No one knows who they are now,” likening the automaker’s actions to the equivalent of reverse confusion.
Nothing short of a high-stakes battle, the outcome stands to have a significant impact on Bentley in the United Kingdom. A final ruling preventing it from manufacturing and selling Bentley-branded apparel and accessories in this regional market would stand in the way of the fact that many luxury automakers are in the business of turning out branded garments, accessories, and other goods, which are regularly snapped up with devoted fans and aspiring luxury car owners, alike. These accessible products serve both as an enduring revenue driver, as well as a marketing exercise. But maybe most importantly, they enable brands to both maintain a connection with loyal customers between car purchases, and to set themselves up for the future by potentially capturing “aspirational buyers years before they can afford the cars themselves.”
UPDATED (December 16, 2020): The Court of Appeal has dismissed Bentley Motors’ appeal, holding that there is “no basis” for it to overturn the lower court’s decision. Then panel of judges unanimously held that Bentley Motors infringed the registered trademarks of Bentley Clothing by using the identical trademark on their clothing, and could not escape liability on the basis of “honest concurrent use.”
Bentley has until February 3, 2021 to destroy all infringing apparel and accessories.