Cosmetics infringement in the UK High Court

Beauty Bay Limited v Benefit Cosmetics Ltd

BEAUTY & THE BAY is not an infringement of BEAUTY BAY according to the High Court. A US cosmetics company's use of the name "BEAUTY & THE BAY" on a Christmas gift set did not infringe the claimants' UK and EU trade marks for BEAUTY BAY and BEAUTYBAY pursuant to Regulation 2017/1001 article 9(2)(b) or article 9(2)(c), or amount to passing off.

There was no likelihood of confusion between the parties' products and the average consumer would not perceive a link between them.

The judgment and grounds for decision

The claimants are the proprietor and licensee of UK and EU trade marks for BEAUTY BAY and BEAUTYBAY for cosmetics and skin care products in class 3 and related retail services in class 35. They operate a successful online business selling cosmetics, beauty products and accessories under their BEAUTY BAY sign.

The defendant is the UK subsidiary of a global manufacturer and retailer of cosmetics based in San Francisco. Its products are sold through its own stores, concessions in third-party department stores and online. In 2017, it sold a Christmas gift set, comprising four cosmetics items in a globe-shaped box, under the name "BEAUTY & THE BAY":

The claimants alleged trade mark infringement and passing off by the defendant. The claimants complained that the defendant's sale of those gift sets infringed their rights under Regulation 2017/1001 article 9(2)(b) and article 9(2)(c). The claimants also argued that it amounted to passing off.

Besides an initial revocation counterclaim (later discontinued), the defendant argued that:

• the Benefit mark appeared prominently on the base of the box itself and this serves to indicate to consumers that the product originated from Benefit and no one else
• "Beauty & the Bay" would be understood by the average consumer as being a clear play on the expression "Beauty and the Beast"
• no consumer faced with the product would sensibly conclude that BEAUTY & THE BAY has any commercial origin other than Benefit's.

Article 9(2)(b)

To infringe article 9(2)(b), the protected sign had to:

• be used by a third party within the relevant territory
• be used in the course of trade
• be used without the proprietor's consent
• be identical or similar to the trade mark
• be used in relation to goods or services which were identical or similar to those for which the trade mark was registered
• give rise to a likelihood of confusion (Comic Enterprises).

There would be a likelihood of confusion where the association between the marks created a risk that the public might believe that the respective goods or services came from the same or economically-linked undertakings. The Court found BEAUTY BAY and BEAUTY & THE BAY were visually and conceptually similar to a medium degree.

The Court considered that:

• BEAUTY & THE BAY is used as a brand to differentiate the product at hand from other products offered by the defendant.
• The Benefit logo is relatively small compared to BEAUTY & THE BAY which is in a much larger font.
• The defendant relied on the fact that its product was sold through Benefit stores where the staff are trained to engage with customers in a particular way (the so-called 'Magic Formula'). This meant that that there would be no confusion as customers were always made aware that the products within the Benefit concessions are Benefit's own products.

In relation to the likelihood of confusion, the Court found that the claimants were not wrong in submitting that the average consumer might think that there was collaboration between them and Benefit.

Based on all the relevant circumstances, the Court concluded that no likelihood of confusion could be established. As a result, no trade mark infringement was found to subsist.

Article 9(2)(c)

The Comic Enterprises factors for article 9(2)(c) were also followed. The claimants had established a reputation for BEAUTY BAY in the UK concerning both their class 3 and class 35 registrations.

The requirement for a link to be established between the sign and the proprietor of the registered trade marks is satisfied where the sign brought the trade mark to the mind of an average consumer. The likelihood of confusion to establish the existence of a link was not necessary.

The relevant factors in this case included the identity of the products and services for which the marks are registered and the products and services on which the sign is used and the degree of similarity between the marks and the sign. The average consumer would not make the required link based on the degree of similarity. There was no likelihood that the defendant's use of BEAUTY & THE BAY resulted in any detriment to, or took unfair advantage of, the distinctive character or reputation of the claimants' marks.

Passing off

Since there was no likelihood of confusion, it was not possible to find that the defendant's use of BEAUTY & THE BAY had resulted in a misrepresentation to the average consumer. The case in passing off failed.

Case ref: [2019] EWHC 1150 (Ch)