What's it about?
Beauty Bay is an online retailer of cosmetics and beauty products. Beauty Bay owns UK and EU trade marks for the word mark BEAUTY BAY, registered for cosmetics and retail services connected with the sale of cosmetics. The Defendant, Benefit, is the UK subsidiary of the global manufacturer and retailer Benefit, based in San Francisco.
The product concerned was a Benefit Christmas gift set of four cosmetic products in a globe shaped opaque gift box. The words BEAUTY & THE BAY appeared on the box in large lettering together with illustrations of the San Francisco Bay and the Golden Gate Bridge. Benefit's logo appeared in small text on the base of the box, as well as on the products inside the box. The gift set formed part of a range intended to celebrate Benefit's San Francisco heritage and the 50th anniversary of the "summer of love". It was sold in Benefit boutiques, Benefit concessions and on third party websites where it was described as "Benefit Beauty & The Bay". Benefit claimed that BEAUTY & THE BAY would be understood to be a play on "Beauty & the Beast".
Why does it matter?
In relation to trade mark infringement under Article 9(2)(b), the judge emphasised that the likelihood of confusion should be judged through the eyes of the average consumer of the goods, and the test was one of global appreciation taking into account all relevant circumstances. The sign should not be stripped of its context. Here, there was no evidence of actual confusion, but the judge said that this was a case where any actual confusion was unlikely to come to the attention of the parties. Having considered all of the relevant factors in a global appreciation, the judge found there was no likelihood of confusion. The claim for passing off also failed.
The court went on to consider trade mark infringement under Article 9(2)(c). Whilst Beauty Bay were able to show a reputation, the judge found that there was no link between the sign and the trade mark taking into account the use made by Benefit. Therefore the Article 9(2)(c) claim failed.
Even if Beauty Bay had been able to show the necessary link, there was no detriment to the distinctive character of the trade mark, because Beauty Bay were unable to show a change in the economic behaviour of consumers resulting from customers making the link. In relation to taking unfair advantage of the distinctive character of the trade mark, the judge found that this was not a case of Benefit seeking to ride on the coat-tails of the trade mark. The choice of name for the Benefit gift box had nothing to do with Beauty Bay's trade mark.
At first sight, simply comparing mark with sign, it is perhaps surprising that BEAUTY & THE BAY was not found to infringe the very similar mark BEAUTY BAY. But this case importantly emphasises the need to take into account all of the relevant circumstances of use in assessing whether there is a likelihood of confusion and whether consumers are likely to make a link with the trade mark.