Bentley Motors Limited (BML) contends that as of 22 December 2008 it had acquired an exceptional reputation in relation to the design and manufacture of high-end luxury motor cars. Use of the mark in suit would enable Bentley 1962 Limited (1962) to benefit from the attractive image that BML had built up in the mark BENTLEY and therefore free-ride on the effort that BML had expended in promoting its BENTLEY mark. If the goods sold by 1962 were of poor quality it would damage the reputation of BML. Use of the mark in suit would erode the distinctiveness of BML’s BENTLEY mark.
BML contends that it has used the mark BENTLEY in respect of, motor vehicles; jewellery; watches; clocks; clothing; gloves; scarfes; handbags; wallets; cufflinks; ties; goggles; model cars; toys; games; paperweights; writing implements; notepads; candles; fragrances; skis; mobile phones; eyewear; furniture; key-rings; mugs; lanyards since 1920 and by 22 December 2008 had a very high level of goodwill in the BENTLEY mark.
1962 provided a counterstatement, dated 22 February 2016, in which it denies that BML has any reputation or goodwill in the mark BENTLEY in regard to goods categorised under Class 25 – Clothing; footwear; headgear.
1962 had been selling BENTLEY branded clothing in the UK since at least 1998, with very little commercial success. BML applied to invalidate 1962’s 2008 registration for the Class 25 goods in 2015.
BML may have expected to succeed because in 2014, they successfully opposed an application by 1962 for BENTLEY 1962 for the same goods, relying on, amongst other successful grounds, unfair advantage.
This time around, BML failed.
UKIPO noted there was history between the parties. He criticised BML’s proof of use evidence, meaning its likelihood of confusion under Trade Marks Act 1994, Section 5(2(b)), failed.
The UKIPO accepted BML had a reputation for cars and that it would be called to mind by 1962’s use on clothing. However, the UKIPO concluded that there would not have been an unfair advantage when the mark was applied for in 2008.
The justification from the UKIPO’s Hearing Officer for the different decision on this occasion was due to the fact he had to consider an earlier time period on different evidence than the Hearing Officer in 2014.
A reminder then that a given piece of litigation is resolved on the day by a judge or decision maker on the facts and evidence before him at that time. On another day, results may vary!