The battle between Bentley Clothing and Bentley Motors will this week be back in front of the courts. On Tuesday, 08 December, Christopher Lees will once again face the Volkswagon owned car giant in a fight over the Bentley trademark.
It’s an unfortunate truth that IP laws are heavily stacked in favour of the man with the deeper pocket. While a small business owner may own trademarks or registered design rights, a legal battle to defend them can quickly eat up capital and in some instances result in bankruptcy. Large corporations often attempt to bully small brands into giving up their IP rights by drowning them in legal documentation. Many of these smaller brands owners find themselves in a David and Goliath situation and just don’t have the finance, time or team of lawyers required to take on a legal challenge and enforce their rights.
For the last fifteen years, Bentley Motors have been attempting to bully small business owner Christopher Lees and his family into relinquishing their trademark for their business, Bentley Clothing.
The luxury motor company attempted to cancel the clothing brand’s trademarks despite the brand owning these trademarks since it was founded in 1962. Christopher Lees and his father, Bob, acquired the Bentley Clothing brand and its associated trademarks from the company’s founder, Gerald Bentley, back in 1992. Bentley Clothing makes T-shirts, sweatshirts and hats for men, women and children, priced between £25 and £45 and its clothes have previously been sold in stores such as House of Fraser and Fenwick. Back in 1987, Bentley Motors started to sell a small range of clothing featuring the B-in-wings logo, but not the word ‘BENTLEY’. Chris Lees offered to license the trademark to Bentley Motors in 1998, when Volkswagen bought the brand, in a letter to then VW chief executive Ferdinand Piëch. However, Bentley Motors did not take him up on the offer and in 2000, Bentley Motors began to sell clothes using the word ‘BENTLEY’, despite it clearly infringing Bentley clothing’s trademarks.
From 2015 onwards, the parties became involved in various trade mark registry proceedings over ownership of the ‘BENTLEY’ mark for clothing and headgear in both the UK and the EU in the UK Intellectual Property Office. Bentley Motors challenged the trademark for non-use, specifically between the dates 25 March 2009 – 24 March 2014. (Trademarks can be revoked if they are not used within five years of their registration or for a consecutive five year period at any time afterwards – you use it or you lose it!) However, Lees provided evidence that his brand’s sales in that 5 year period were £130,658, based only on sales between 25 March 2009 until 31 December 2010 and that they had also used the trademark in marketing campaigns during this period
After Bentley Motors failed to cancel all of Bentley Clothing’s UK trade marks, Bentley Clothing was left with no other choice than to start infringement proceedings in the courts, culminating in a decision by the High Court in November 2019 that Bentley Motors must stop selling branded clothing in the UK. The case centred around two of their trade marks (a word mark for “BENTLEY” and a figurative mark containing the word “BENTLEY”) through Bentley Motors’s use of the marks on a range of branded clothing and headwear. The court considered two questions.
(a) did the use by Bentley of the combination sign on clothing infringe the trade mark owned by Bentley Clothing in class 25 for clothing?
(b) if so, did Bentley Motors have a defence of honest concurrent use because their use did not unfairly prejudice the rights of Bentley Clothing?
On the first point the court ruled yes and on the second, no, stating that the behaviour of Bentley Motors amounted to a steady encroachment on Bentley Clothing’s goodwill’ and that Bentley Motors’ policy is … consistent with an intent to clear away Bentley Clothing’s right to protect the BENTLEY mark for clothing and headgear and ultimately to extinguish Bentley Clothing’s right altogether.
The Court of Appeal will this week look at whether Bentley Motor’s “composite mark” should not be considered the same.
As one can only imagine, the time and energy spent dealing with the legal battle often comes at the expense of the very business that they are trying to save. How can a small family business give the time and attention required to grow when their time is eaten up fighting lawsuits? The lawsuits with Bentley Motors has also scared off potential licensees, says Lees. A planned 2013 license agreement with a prominent UK fashion distributor broke down because the distributor feared legal action by Bentley Motors. Regardless of who is in the right, few firms will take the risk of getting into a legal battle with a large organisation – it’s just not worth the risk.
In addition to the enormous costs and effects of the legal wrangling on the Lees’ family’s business, the personal toll has been immense. In 2019 Chris’s brother, at one time very involved with the business, died from a heart attack. His parents have lost their retirement. Their pensions and home have been eaten up with ever mounting legal costs. Chris has been forced to take on a part time job to help with the costs and his career, he says, has been effectively ruined. The Lees family have invested everything in this fight and Tuesday’s decision will confirm whether or not the battle has been in vain.
It is notable that Lees had offered to license the trademark to Bentley Motors in the past, an offer which they refused, presumably thinking they could force his hand using their size and substantial financial resources. What they hadn’t counted on, was Lees’s tenacity and drive to fight for the business that his family had devoted their lives to. He didn’t give up and it’s looking as though Bentley Motors will pay a steep price for underestimating him.