In furtherance of the previous post about the BMW Emblem case , the current post is regarding the luxury automobile manufacturer, Bentley Motors Inc, which prevailed in a trademark infringement lawsuit against the makers and installers of kits that transform more modest vehicles into virtual clones of the Bentley.
The crux of the issue here is, whether producing and installing external body kits to inexpensive vehicles to seem similar to high-end luxury automobiles constitutes trademark infringement and dilution of the rights holder’s mark?
Bentley sued Defendants Matthew McEntegart, owner of St. Petersburg, Florida based Fugazzi Cars Inc., and Robert Frary III, owner of ‘Keeping It Real Auto Customizing Inc’., in July 2012, before the United States District Court, M.D. Florida, Tampa Division. The case was filed based on the claim that the Defendant was engaged in falsifying and counterfeiting the design and trade dress of the Plaintiff by applying them over their vehicles.
Bentley claimed that the Defendants illegally manufactured body kits which were fitted on to cheaper and less expensive cars of Chrysler and Ford to make them appear like Bentley cars. Bentley alleged that such act of the Defendants was purely intentional and had been committed to misappropriate the external look and design of the Bentley GTC vehicle, and other Bentley trademarks. Therefore, Bentley and its subsidiary in the U.S., Bentley Motor, filed a preliminary injunction to restrain the Defendants, i.e McEntegart and Frary from making, advertising or selling their kits.
The first Defendant McEntegart contended that he created a body kit from his own imagination and did not copy the Bentley GTC. He also claimed that, his body kit had several differences in the overall appearance and specific dimensions while comparing to Bentley’s vehicles.
In response to the claims of the Plaintiff, the second Defendant Frary contended that his company, “Keeping it Real”, only painted three of the cars which had already been fitted with body kits by Fugazzi cars, and such act of the Defendant II does not violate anyone’s legal right.
In final remarks about the decision, the judge ruled that Bentley had successfully demonstrated actual consumer confusion by offering statements of consumers who noted the similarities between the car kits and actual Bentley vehicles. The Court protected the registered trademark Bentley, and has prevented unauthorized use of the trademark, by taking into account actual confusion of the consumers, with the trademark & impugned mark. Also, the Court on 3rd February 2014 awarded damages of five hundred thousand dollars in favor of the Plaintiff to be paid by Defendant I, i.e McEntegart representing Fugazzi Cars.
Authored by Sarthak Saran.
