“Issue estoppel may arise where a particular issue forming a necessary ingredient in a cause of action has been litigated and decided and in subsequent proceedings between the same parties involving a different cause of action to which the same issue is relevant one of the parties seeks to re-open that issue. This form of estoppel seems first to have appeared in Duchess of Kingston's Case (1776) 20 St.Tr. 355. A later instance is Reg. v. Inhabitants of the Township of Hartington Middle Quarter (1855) 4 E. & B. 780. The name ‘issue estoppel’ was first attributed to it by Higgins J. in the High Court of Australia in Hoysted v. Federal Commissioner of Taxation (1921) 29 C.L.R. 537, 561. It was adopted by Diplock L.J. in Thoday v. Thoday [1964] P. 181. Having described cause of action estoppel as one form of estoppel per rem judicatam, he said, at p.198: ‘The second species, which I will call ‘issue estoppel’, is an extension of the same rule of public policy. There are many causes of action which can only be established by proving that two or more different conditions are fulfilled. Such causes of action involve as many separate issues between the parties as there are conditions to be fulfilled by the plaintiff in order to establish his cause of action; and there may be cases where the fulfilment of an identical condition is a requirement common to two or more different causes of action. If in litigation upon one such cause of action any of such separate issues as to whether a particular condition has been fulfilled is determined by a court of competent jurisdiction, either upon evidence or upon admission by a party to the litigation, neither party can, in subsequent litigation between one another upon any cause of action which depends upon the fulfilment of the identical condition, assert that the condition was fulfilled if the court has in the first litigation determined that it was not, or deny that it was fulfilled if the court in the first litigation determined that it was.’” ‘The second species, which I will call ‘issue estoppel’, is an extension of the same rule of public policy. There are many causes of action which can only be established by proving that two or more different conditions are fulfilled. Such causes of action involve as many separate issues between the parties as there are conditions to be fulfilled by the plaintiff in order to establish his cause of action; and there may be cases where the fulfilment of an identical condition is a requirement common to two or more different causes of action. If in litigation upon one such cause of action any of such separate issues as to whether a particular condition has been fulfilled is determined by a court of competent jurisdiction, either upon evidence or upon admission by a party to the litigation, neither party can, in subsequent litigation between one another upon any cause of action which depends upon the fulfilment of the identical condition, assert that the condition was fulfilled if the court has in the first litigation determined that it was not, or deny that it was fulfilled if the court in the first litigation determined that it was.’”
“8.01 A decision will create an issue estoppel if it determined an issue in a cause of action is an essential step in its reasoning. Issue estoppel applies to fundamental issues determined in an earlier proceeding which formed the basis of the judgment. … 8.20 Where the issue in the second proceedings is not the same as that decided in, or covered by the first, there is no estoppel.”
“• JP3: A brochure dated ‘2000’ which shows the company as [Rolls Royce & Bentley]. This has polo and t-shirts, hats, jackets, chairs, sports bags, umbrellas, watches, mugs, coasters, key rings and jumpers. All the above have a winged letter ‘B’ with on occasions the words ‘TEAM BENTLEY’ written underneath. It is labelled ‘The Bentley Collection’ and refers to the return to Le Mans. The items are typical 28. of the kind of clothing where the item is intended to indicate support for a particular team, in this instance a racing team, in that they liberally emblazoned with the name of the team or its emblem. 29. … •. JP6: Copies of pages from www.bentleycollection.com dated between 2002 and 2009. These pages show a variety of goods being offered for sale. The pages have upon them the word BENTLEY and also the winged letter ‘B’. The goods include jackets, shirts, ties, caps, gloves, scarves, stoles, cufflinks, purses, key fobs, writing implements, hip flasks, picture frames, mugs, bags, golf balls, umbrellas, books, teddy bears, wallets, leather CD and card holders. It is difficult to see what mark, if any, is on many of the items. Those where a mark is visible appear to mostly have just the winged letter ‘B’, or that logo with the word BENTLEY written underneath. Similar if not identical to JP3 the items of clothing have the ‘winged B’ and ‘Team Bentley’ emblazoned upon them, with the term Bentley reserved for the interior/back label. •. JP7: Copies of ‘The Bentley Collection’ brochures from 2002 to 2008 which show a variety of goods being offered for sale. There is considerable duplication in the items on offer from one year to the next in the 260 pages in this exhibit. The pages have upon them the word BENTLEY and also the winged letter ‘B’. The goods include jackets, shirts, ties, caps, gloves, scarves, stoles, cufflinks, purses, key fobs, writing implements, hip flasks, mugs, sports bags, rucksacks, wine coolers, jewellery boxes, luggage, briefcases, toiletries bag, chairs, umbrellas, clocks, watches, teddy bears, toys, wallets, leather CD and card holders. Many of the pages are so badly photocopied that nothing can be discerned. Those where a mark is visible appear to mostly have just the winged letter ‘B’, or that logo with the word BENTLEY written underneath. Similar if not identical to JP6.”
“There is a principle of law of general application that it is not possible to approbate and reprobate. That means you are not allowed to blow hot and cold in the attitude you adopt. A man cannot adopt two inconsistent attitudes towards another; he must elect between them and, having elected to adopt one stance, cannot thereafter be permitted to go back and adopt an inconsistent stance.”
“53) … The figures at paragraph 7 [of the Hearing Officer’s Decision, which he took from Bentley Motors’ evidence] for clothing are suspect and only begin in 2005 and even then are very small, however the exhibits (JP3, 6 & 7) show use on clothing from 2000. … I conclude that [Bentley Motors] has shown that it has goodwill in the mark BENTLEY in respect of cars and watches among a substantial proportion of the population of the UK, and to a lesser extent it has goodwill in clothing.”
“‘Bentley’ and the ‘B-in-Wings’ device are registered trademarks.”
“‘Bentley’ and the ‘B-in-Wings’ device are registered trademarks.”
“…authorised to manufacture, or to have manufactured for it, and to sell items of golf apparel and golf accessories that have the Bentley word mark and the ‘B’ in wings device applied to them. The relevant trade marks are listed in the attachment to this letter.”
“the word or mark ‘Bentley’ and ‘B in wings’ and the registrations of the same and any registrations granted pursuant to such applications.”
“…in preparing this statement I have reviewed all of the licence agreements with the third parties referred to at paragraph 23 of my first statement and they all contain licences to use the name BENTLEY, either as part of a composite logo or the word BENTLEY alone.”
“[78] Secondly, the court must then consider a notional and fair use of that mark in relation to all of the goods or services in respect of which it is registered. Of course it may have become more distinctive as a result of the use which has been made of it. If so, that is a matter to be taken into account for, as the Court of Justice reiterated in Canon at [18], the more distinctive the earlier mark, the greater the risk of confusion. But it may not have been used at all, or it may only have been used in relation to some of the goods or services falling within the specification, and such use may have been on a small scale. In such a case the proprietor is still entitled to protection against the use of a similar sign in relation to similar goods if the use is such as to give rise to a likelihood of confusion.”
“… where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark.”
“4 (1) … section 14 of this Act (action for infringement) applies in relation to infringement of an existing registered mark committed after the commencement of this Act, subject to sub-paragraph (2) below. The old law continues to apply in relation to infringements committed before commencement. (2) It is not an infringement of — The old law continues to apply in relation to infringements committed before commencement. (2) It is not an infringement of — (a). an existing registered mark, or (b) a registered trade mark of which the distinctive elements are the same or substantially the same as those of an existing registered mark and which is registered for the same goods or services, to continue after commencement any use which did not amount to infringement of the existing registered mark under the old law.”
“[74] The case law to which I have referred establishes the following principles: (i) Where two separate entities have co-existed for a long period, honestly using the same or closely similar names, the inevitable confusion that arises may have to be tolerated. (ii) This will be the case where the trade mark serves to indicate the goods or services of either of those entities, as opposed to one of them alone. In those circumstances, the guarantee of origin of the claimant’s trade mark is not impaired by the defendant’s use, because the trade mark does not denote the claimant alone. (iii) However, the defendant must not take steps which exacerbate the level of confusion beyond that which is inevitable and so encroach upon the claimant’s goodwill.” (i) Where two separate entities have co-existed for a long period, honestly using the same or closely similar names, the inevitable confusion that arises may have to be tolerated. (ii) This will be the case where the trade mark serves to indicate the goods or services of either of those entities, as opposed to one of them alone. In those circumstances, the guarantee of origin of the claimant’s trade mark is not impaired by the defendant’s use, because the trade mark does not denote the claimant alone. (iii) However, the defendant must not take steps which exacerbate the level of confusion beyond that which is inevitable and so encroach upon the claimant’s goodwill.”
“[79] In my judgment, the factors which have been considered in the context of honest commercial practices in respect of the own name defence need a degree of adaptation when considering whether ‘concurrent use’ is honest. In particular: (i) The defendant has a duty to act fairly in relation to the legitimate interests of the trade mark proprietor. (ii) All circumstances must be considered when ascertaining whether or not the use by the defendant is honest, including whether the defendant can be regarded as unfairly competing with the trade mark proprietor. (iii) However, the question is not simply whether use of the sign complained of gives rise to consumer deception, as such deception may have to be tolerated. Similarly, the defendant may well be aware of the existence of such confusion, having lived with it for a considerable period. (iv) The question is whether the defendant has taken steps which exacerbate the level of confusion beyond that which is inevitable and so has encroached upon the claimant’s goodwill. (v) Whether the defendant ought to be aware that such steps will exacerbate confusion is a relevant factor.”
“[76] … it should be stressed that the circumstances which gave rise to the dispute in the main proceedings are exceptional.”
“… one of those rare cases in which the use of the mark complained of is indeed honest and that it has not had and will not have an adverse effect upon the essential function of the registered trade mark, and that is so because the guarantee of origin the mark provides is just the same as it has always been.”
“… I do not accept that the reasoning of the deputy judge leads directly and inevitably to the conclusion that each party may now start using the name Ideal Home in relation to the core activities of the other. That, it seems to me, would be an expansion of a different nature from that which the parties have undertaken in relation to retail services on the internet, and that is so because it would involve an encroachment into precisely the area of business in relation to which each has generated a goodwill over many years. As such I believe it would involve the use of the name in a different context and might well result in the actionable deception of a significant number of persons.”
“Our current view is that clothing is not seen as a major growth area for us. We do feel that if we are to venture into this area (to a greater extent [than] the current limited range) that it needs to be done well and at the moment there are other priorities for the development of our branded goods range.”
“New Clothing Range We are currently in the process of finalising the new clothing range and we expect this to be available by April. … We will be producing a new high-quality range of jackets, tops and t-shirts with contemporary designs and a subtle Bentley branding. We have focused on improved quality of manufacture and materials, such as 100% merino wool scarf and hat sets. … Another exciting development in the Spring will be a children’s clothing range including baseball cap, t-shirt and fleece top. This range will continue to evolve over the next year.”
“… a licence (whether general or limited) authorising the licensee to the exclusion of all other persons, including the person granting the licence, to use a registered trade mark in the manner authorised by the licence.”
“Bentley 1962 Limited (the OWNER) is the owner of all the UK registered trademarks relating to ‘BENTLEY’ for goods in class 25 as listed in the attached schedule A and by this agreement appoints Brandlogic Limited (the MANAGER) on a sole and exclusive basis to manage and develop the scheduled trademarks and the BENTLEY clothing brand on behalf of the OWNER, on the following terms, … 1. Brandlogic Limited (the MANAGER) acting exclusively in all matters relating to the BENTLEY brand on the OWNER’S behalf and with his authority, shall use its best endeavours and using third parties where the MANAGER considers appropriate in order to: - [tasks set out].”