The car manufacturer Bentley have been instructed by the High Court to destroy a range of clothing they produced which was found to infringe a Manchester based clothing company’s trademark.

While the car manufacturers already hold the Bentley trademark in various classes of goods and services to do with automobiles, their venture into clothing bearing the Bentley name infringed the trademark of another company.

Trademarks, such as logos, slogans, and phrases, must designate the class or classes of goods and/or services they are to be used for when they are registered. It is not possible to expand the scope of protection to another class once the trade mark is registered. However, a new trade mark application would have to be made for another class or classes of goods or services. Therefore, it is always worthwhile considering where you may wish to use the trademark in the future, and applying for these classes during the application process.

When a trade mark is applied for, it will be compared to other trademarks that are already registered, to see if it is capable of distinguishing goods or service from others on the market. Typically, the appearance and wording of the trademark will be taken into consideration and compared with those associated with similar goods and services. The more similar the application is to already registered trademarks or trademarks with extensive use, the less likely it is to be allowed.

Other criteria such as whether the trade mark is distinctive, and whether it is in morally good taste are also considered when deciding whether a trade mark is allowed.

There is then a period of 5 years in which the trademark must be used in these classes, otherwise it’s protection in this class risks being cancelled due to non-use if challenged. Accordingly, if you risk infringing a competitors trademark in a certain class, it is worthwhile checking whether they have used the trade mark for such a class within the last 5 years (providing the trademark is at least 5 years old).

In the UK, trade marks must be renewed every 10 years for a fee, but can be renewed indefinitely and so can be a very important form of intellectual property. It is the same for an EU trade mark.

If you have any questions regarding trade marks or brand protection, please do not hesitate to get in touch.