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England and Wales Court of Appeal (Civil Division) Decisions
You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Bentley Motors Limited v (1) Bentley 1962 Limited (2) Brandlogic Limited  EWCA Civ 1726 (16 December 2020)
Cite as:  WLR(D) 687,  Bus LR 736,  EWCA Civ 1726
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ON APPEAL FROM THE HIGH COURT OF JUSTICE,
BUSINESS AND PROPERTY COURTS,
INTELLECTUAL PROPERTY LIST (CHANCERY DIVISION)
His Honour Judge Hacon
Strand, London, WC2A 2LL
B e f o r e :
LORD JUSTICE ARNOLD
MR JUSTICE MARCUS SMITH
| BENTLEY MOTORS LIMITED
|- and -
|(1) BENTLEY 1962 LIMITED
(2) BRANDLOGIC LIMITED
Hugo Cuddigan QC and Mitchell Beebe (instructed by Fox Williams LLP) for the Respondents
Hearing date : 8 December 2020
Crown Copyright ©
Lord Justice Arnold:
The Trade Marks
|1180215||Articles of knitted clothing; shirts and waistcoats||12 Aug 1982|
||Clothing; headgear; articles of knitted clothing, knitwear, jumpers, pullovers, cardigans, sweaters, shirts, sweatshirts, T-shirts, polo shirts, coats, jackets, top coats, overcoats, raincoats, car coats, waistcoats, blousons, articles of clothing for casual wear, shorts, articles of sports clothing, blouses, hats, caps, scarves, gloves, anoraks||22 Sep 1998|
|2505233||BENTLEY||Clothing and headgear||22 Dec 2008|
Bentley Clothing's use of the Trade Marks
Bentley Motors' use of signs consisting of or comprising the word BENTLEY in relation to clothing and headgear
The legal framework
Rights conferred by a trade mark
1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.
4. Where, under the law of the Member State, the use of a sign under the conditions referred to in paragraph 1(b) or paragraph 2 could not be prohibited before the date of entry into force of the provisions necessary to comply with Directive 89/104/EEC in the Member State concerned, the rights conferred by the trade mark may not be relied on to prevent the continued use of the sign.
"(1) Sections 9 to 12 of this Act (effects of registration) apply in relation to an existing registered mark as from the commencement of this Act and section 14 of this Act (action for infringement) applies in relation to infringement of an existing registered mark committed after the commencement of this Act, subject to sub-paragraph (2) below. The old law continues to apply in relation to infringements committed before commencement.
(2) It is not an infringement of-
(a) an existing registered mark, or
(b) a registered trade mark of which the distinctive elements are the same or substantially the same as those of an existing registered mark and which is registered for the same goods or services,
to continue after commencement any use which did not amount to infringement of the existing registered mark under the old law."
One sign or two?
"55. Both the word BENTLEY and the B-in-Wings device were used extensively and separately for a long time before November 2011. The device was registered as a trade mark by Bentley Motors in 1980 and was used for some years before then. Mostly the two signs were used other than for clothing or headgear, but I was given no reason to suppose that the average consumer would perceive any difference in the use of those signs in one context or another. The average consumer's perception would have developed from all use of those signs.
56. The fact that the word BENTLEY and the B-in-Wings sign were used separately over a long period suggest to me that in the early 2000s the average consumer would have taken them to be separate signs.
57. … for the reasons given above I think that Bentley Motors continued to regard the word BENTLEY and the B-in-Wings sign as two separate signs up until 2014. I also think that this view would have been transmitted, expressly or by implication, to Bentley Motors' trading partners. Consumers would not have received any contrary impression. I have no doubt that until 2014 the average consumer, long familiar with both the B-in-Wings device and the BENTLEY name as individual trade marks, when seeing the two used together in the Combination Sign would have taken them to be exactly that: two familiar signs being used together."
He went on to conclude that the average consumer's perception would not have changed as a result of efforts by Bentley Motors to tell its licensees that the B-in-wings device should always appear together with the word BENTLEY from 2014 onwards.
Infringement under Article 5(1)(a)?
i) There must be use of a sign by a third party within the relevant territory.
ii) The use must be in the course of trade.
iii) The use must be without the consent of the proprietor of the trade mark.
iv) The use must be of a sign which is identical to the trade mark.
v) The use must be (a) in relation to goods or services (b) which are identical to those for which the trade mark is registered.
vi) The use must affect, or be liable to affect, one of the functions of the trade mark.
"If it was perceived to be two signs, Bentley Motors did not dispute that the Word Mark and the word part of the Series Mark were infringed pursuant to s.10(1) of the Trade Marks Act 1994 … , subject to the two defences referred to below."
The two defences referred to were (i) honest concurrent use and (ii) under the transitional provision contained in Schedule 3 paragraph 4 of the 1994 Act.
"163. … The conclusion which I draw from this analysis is that it is unclear which party bears the burden of proof with regard to condition (vi). There are four possible interpretations of Article 5(1)(a) …. The first is that, once the trade mark proprietor has shown that condition (v) is satisfied, the defendant bears the onus of proving that the use does not affect, nor is liable to affect, any of the functions of the trade mark. The second possibility is that the defendant bears the onus of proving that there is no likelihood of confusion, and hence no damage to the origin function, in which case the onus shifts to the trade mark proprietor to prove that the use affects, or is liable to affect, some other function of the trade mark. The third possibility is that, even if the trade mark proprietor bears the burden of proof in keyword advertising cases and other cases of referential use, the defendant bears the burden of proof in ordinary cases. The fourth possibility is that the proprietor bears the onus of proof in all cases.
164. In my view this is an important issue of European trade mark law which will have to be referred to the CJEU for determination, preferably sooner rather than later. But having regard to my other conclusions, I do not consider it necessary to refer the issue to the CJEU in this case. I shall therefore adopt what I consider to be the better view, which is that the first interpretation set out in the preceding paragraph is the correct one. While the second interpretation might be preferred for the reasons given in paragraph 133 above, it seems to me that the first is more consistent with the CJEU's case law on exhaustion. …"
"The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed … "
As noted in Supreme Petfoods at , the CJEU has repeatedly held that, in a field of intellectual property law where the European Union has legislated, such as trade marks, national courts must interpret both European and domestic legislation as far as possible in the light of the wording and purpose of relevant international agreements to which the EU is a party, and in particular TRIPS.
"147. It seems clear from this reasoning that it is for the defendant to the claim for a declaration of invalidity under Article 4(1)(a) to prove that the respective trade marks have coexisted on the market for a long period without there being confusion, and hence that the use of the defendant's trade mark has not had, nor is liable to have, an adverse affect on the origin function of the claimant's trade mark. Although the Court did not refer to a presumption or refer to Article 16(1) of TRIPS, this strongly supports the proposition that a likelihood of confusion is rebuttably presumed in a double identity case.
148. It is rather less clear what the position is with regard to adverse effect on the other functions of the trade mark. Does the defendant also have to demonstrate that there has been no effect on any other function? Or can the defendant rely upon coexistence without confusion as shifting the burden to the claimant to show an adverse effect, or a likelihood of adverse effect, on some other function?"
"If, which is denied generally as aforesaid, but admitted in relation to the Defendant's Beanies, the Defendant has used a sign identical to any of the First Claimant's Marks in relation to any goods identical to the goods for which such mark is registered, … the Defendant avers that its use of the name BENTLEY and/or the Combination Mark has at all material times amounted to honest concurrent use of those signs. In particular: [various particulars were given in sub-paragraphs a to f]. g. In the premises, the Defendant's use of the name BENTLEY and/or the Combination Mark in relation to clothing is not liable to have any adverse affect on the functions of the First Claimant's Marks."
"The CJEU reiterated in Budejovický Budvar that a trade mark will be infringed only if use of the sign in issue is liable to affect the functions of the mark. The Court ruled that if there has been honest concurrent use of the accused sign, such use would not have, nor would it be liable to have, an adverse effect on the origin function of the trade mark. Honest concurrent use therefore provides a defence to infringement."
That was an entirely accurate statement as to the legal foundation for Bentley Motors' pleaded case in paragraph 35 of the Amended Defence.
"157. [The available] evidence gives the strong impression that from around 2000 Bentley Motors engaged in a policy of 'grandmother's footsteps' in relation to Bentley Clothing – 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 the hope that no one stage would provoke a reaction from Bentley Clothing.
158. In my judgment this did not constitute honest concurrent use. It may be that because of the modest level of trading by both sides there has been little or no confusion caused by the ever-developing use of BENTLEY on the part of Bentley Motors as a sign for clothing and headgear. However, I think that Bentley Motors' policy will have had the intended effect of increasingly arrogating to itself goodwill associated with BENTLEY in the clothing business. This amounted to a steady encroachment on Bentley Clothing's goodwill."
The extent of Bentley Motors' defence under the transitional provision
"Paragraph 4 is a new paragraph which has been added in line with Parliament's proposal. It takes account of the particular legal situation in Member States which grant trade mark protection only for those goods in respect of which the application for registration of the trade mark was made. Since Article  of this proposal extends protection to similar goods, it was necessary to include a provision ensuring that the Directive would not impair existing rights."
The UK was one of the Member States referred to.
Mr Justice Marcus Smith:
Lord Justice Lewison: