Bentley v. Bentley: It can’t happen here
Bentley Motors v. Bentley Clothing — a no-brainer, right?
Right. But not the way you’d think.
Bentley clothing won — and I wrote about why they should in this 2017 post.
Bentley Clothing had been using the name Bentley for a clothing line from well before the super-duper-luxe car maker had ever dreamed of lowering itself to cash in on the revenue flow from Bentley-branded gewgaws and other reverse-garbagio goods. The automaker tried to drive right over the clothier, but a UK court blew out its tires.
I don’t know of there is a “secondary source” rule for trademarks under UK law, or if some attempt to invoke it sideways (“we would have used it in a non-ornamental fashion”!) was used in this case. Or whatever. All I know is, this is the right outcome.
I can’t imagine it happening here. But I could be wrong. Maybe somewhere across the fruited plain there are judges that don’t defer to “major brands” in trademark cases. Can you even imagine these words being used to describe an outcome adverse to a zillion-dollar brand-equity holder in Murica?:
The carmaker . . . faces a hefty damages bill if its appeal against a High Court ruling is unsuccessful, at which point it would have to destroy much of its branded clothing within five weeks.
That’s right. Fancy, hoity-toity, hand-made, craftily-crafted, if-you-have-to-ask-you-can’t-afford-it Bentley will have to destroy its stock of infringing BENTLEY merchandise like a common Chinatown Phony-Vuitton-monger.
No, I can’t see that happening here. And we all know I’m wrong a lot, so there’s that. But one thing I know can’t happen here is that the English Rule applies, unsurprisingly, in England. Also from the Times article:
Bentley Motors has been ordered to pay a family-run clothing company more than £400,000 in legal costs after it was found to have infringed its trademarks.
That’s real money. Not for Google or Facebook, of course, but probably for Bentley. At least, a little bit. Obviously if it were real real money, it would have been enough to disincentivize Bentley from its suicidal attempt to act the trademark bully despite every reason in the world to know it was going to lose.
No, the English Rule didn’t stop Bentley Motors. But at least it compensated Bentley Clothing and its lawyers for having to extend themselves in defending an unjust and unjustifiable litigation power play.