David has triumphed over Goliath once more in the battle of the brands as Bentley Motors, the luxury carmaker, loses a trade mark invalidity action against Manchester clothing company Bentley.
In a recent growing trend, it seems that selling cars may be last on the list for luxury car companies such as Ferrari, Porsche and BMW, who are moving beyond their normal retail realm, and branching out into new areas including clothing, perfume and shoes. Not one to be left behind, Bentley Motors have been producing clothes since 2000.
Bentley Motors applied to have the Bentley clothing trade mark invalidated, alleging that the goods covered by the clothing brand were too similar to those protected by the carmakers European trade mark, and that there would be a likelihood of confusion on the part of the public, which includes the likelihood of association with the Bentley Motors trade mark. The UK Intellectual Property Office didn’t agree however, and in its decision stated that Bentley Motors had failed to provide any evidence of use of its mark for the goods relied on.
The car company also alleged that Bentley clothing was taking unfair advantage of their reputation in the motor car industry. However, although the IPO agreed that Bentley Motors had a significant reputation in motoring, they failed to agree that Bentley clothing took unfair advantage of that reputation.
We would always advise any company whose brand is an integral part of their business to register a trade mark as soon as possible, and consider what goods and services they may be providing in the future; this IPO decision shows why. The fact that Bentley clothing had a trade mark registered for clothing, and Bentley Motors didn’t, meant that the Manchester brand could continue trade with their registered trade mark.