Bentley Motors Suffers Trademark Defeat at Hands of Bentley Clothing Brand
In the world of business, trademarks play a crucial role in brand identity and consumer recognition. However, the right to these valuable marks can be lost if they are not actively used, as illustrated by a series of recent cases.
Chris Gillespie, a private individual, brought a lawsuit against Google Inc. for registering the term "google" as a trademark. Gillespie had registered 763 domain names that included the word "google." This case highlights the "use it or lose it" principle in trademark law, where failure to actively use a trademark for the goods or services it was registered for can lead to loss of rights to that trademark.
The principle requires genuine use, not sporadic or token use just to maintain registration. Trademark owners must regularly provide proof of use, such as product labels, packaging, advertisements, or sales invoices. In the case of Google, the company was able to demonstrate continuous use, and the lawsuit was eventually dismissed.
The "use it or lose it" principle also affects well-known brands. For instance, the Manchester-based Bentley Clothing company, consisting of less than 10 employees, successfully registered the "Bentley" trademark with the United Kingdom Intellectual Property Office (UK IPO) for clothing and retail services. Despite Bentley Motors' long-standing usage of the "Bentley" mark in connection with garments and accessories since 1920, they failed to provide evidence of such use, leading to the UK IPO allowing Bentley Clothing to use the mark "Bentley" for clothing.
In another case, Adidas attempted to register the trademark "Adizero" in 2009, but was blocked due to its similarity to a trademark already registered by a small church. The objection was based on Adidas' lack of evidence of use, highlighting the importance of demonstrating continuous use to maintain trademark rights.
The "use it or lose it" principle encourages trademark owners to keep actively marketing and using their trademarks. While famous brands like Ferrari, Lamborghini, and Aston Martin sell clothing ranges, Bentley Motors does not have a significant reputation as a clothing manufacturer. However, even famous brands must use their marks to avoid cancellation for non-use.
The "use it or lose it" principle works alongside other protections like dilution to protect famous brands’ distinctiveness. Dilution prevents others from weakening or tarnishing the unique identity and value of a famous mark, regardless of direct competition or confusion.
In summary, the "use it or lose it" principle in trademark law ensures that trademarks are actively used in commerce, allows cancellation of trademarks that are not genuinely used, encourages well-known brands to maintain active use to protect their rights, and works alongside other protections like dilution to protect famous brands’ distinctiveness.
- The "use it or lose it" principle in trademark law underscores the importance of technology companies, like Google, demonstrating continuous use of their trademarks to maintain their rights.
- In the realm of trademark law, famous brands such as Bentley Motors must ensure regular use of their trademarks on technology platforms like product labels, advertisements, and sales invoices, to avoid cancellation for non-use.
