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Honest Concurrent Use

The plaintiff (“Bentley Clothing”) is the owner and exclusive licensee of three trademarks consisting of the word BENTLEY registered for use with clothing and headgear (“the Trademarks”), the earliest of which was registered in 1982.


Defendant (“Bentley Motors”) is a well-known car manufacturer. The plaintiff contends that Bentley Motors infringed the Trademarks by selling clothing and headgear in association with the marks shown below since November 2011.


The mark which appears above the word BENTLEY is known as the “B-in-wings” device. Bentley Motors has used the B-in-wings device for many years. Bentley Clothing has no objection to its use, including on clothing and headgear.


Bentley Motors admitted to substantial use of the combination of the B-in-wings device and the word BENTLEY, which is defined as “the Combination Mark,” as a trademark for its own clothing. Bentley Motors denied the use of a mark identical to any of the Trademarks. It admitted that the Combination Mark was similar to the plaintiff’s wordmark but denied there was a likelihood of confusion.


Bentley Motors and its predecessor have since 1919 extensively used the BENTLEY mark in relation to motor cars, and as a result, that trademark has a substantial reputation. Bentley Motors has sold clothing under marks consisting of or comprising the word BENTLEY since about 1987. This has caused several disputes between the parties


Neither Bentley Clothing nor its predecessors had used the Trademarks on a large scale, but they were nonetheless used.


The Trial Decision

A Judge of the High Court decided, [Bentley 1962 Ltd v Bentley Motors Ltd [2019] EWHC 2925 (Ch),] that Bentley Motors had infringed the Trademarks. Bentley Motors appealed against that decision. Bentley Motors Limited v (1) Bentley 1962 Limited (2) Brandlogic Limited [2020] EWCA Civ 1726


The judge concluded that the average consumer of clothing and/or headgear would perceive the use of Bentley Motors marks shown above to be the use of two distinct marks simultaneously. Since the word BENTLEY and the B-in-Wings mark were used separately over a long period, this suggested that in the early 2000s, the average consumer would have taken them to be separate marks.


Since the use complained of was of two distinct marks, the judge held that the use infringed the plaintiff’s wordmark subject to a defense based on honest concurrent use.


Regarding the honest concurrent use defence, the trial Judge said that evidence gave 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 mark, but only in incremental stages in the hope that no one stage would provoke a reaction from Bentley Clothing.


This did not constitute honest concurrent use. Perhaps 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 by Bentley Motors as a mark for clothing and headgear. However, Bentley Motors’ policy 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 Appeal

It was concluded there was no error of principle in the judge’s conclusion that the defendant used the two distinct marks simultaneously. This assessment was clearly open to him.


Concerning honest concurrent use defense, it was established in the leading decision of the CJEU that a trademark will be infringed only if the use of the mark in the issue is liable to affect the functions of the mark. The Court ruled that if there has been honest concurrent use of the accused mark, such use would not have, nor would it be liable to have, an adverse effect on the origin function of the trademark. Honest concurrent use, therefore, provides a defense to infringement.


The court agreed with the trial Judge’s conclusion concerning the unavailability of this defence.


Comment

The tendency is to think of trademark infringement as a cause of action by itself because of its technical nature. However, there also seems to have been an “agenda” in this case which the Judge has identified to the defendant’s detriment.


Canadian cases do not consider honest concurrent use as discussed above as a defence to an action for infringement. However, if the plaintiff cannot establish a likely prospect of confusion, the action would be dismissed.


Section 21 of the Act is directed to protecting the rights of a person who has, in good faith, used a confusing trademark or tradename before the date of filing of the application for registration of a registered trademark. In proceedings relating to a registered trademark, which has become incontestable by the expiration of the five year period referred to in subsection 17(2), if the Federal Court considers that it is not contrary to the public interest that the continued use of the confusing trademark or tradename should be permitted in a defined territorial area concurrently with the use of the registered trademark, the Court may permit the continued use of the unregistered trademark within that area with an adequate specified distinction from the registered trademark. Unfortunately, the application of the section is limited, and it is not widely used.


If you have questions, please contact me at mckeown@gsnh.com.


John McKeown

Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: mckeown@gsnh.com


These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.


A version of this article originally appeared on the Lawyer’s Daily website published by LexisNexis Canada Inc.

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