Benefitting from no confusion
In the recent High Court case of Beauty Bay and Dotcom Retail v Benefit Cosmetics  EWHC 1150 (Ch), beauty brand Benefit escaped unpunished for its use of ‘BEAUTY & THE BAY’, notwithstanding prior trade mark registrations and common law rights owned by the Claimant in ‘BEAUTY BAY’.
The case is a reminder that the overall impression given by the use of a mark or sign is crucial in trade mark and passing off cases. No one factor will necessarily make or break a case and the Court will ultimately have to assess, in cases where there is no double identity, whether confusion is really likely, looking at everything in the round.
The Court found Benefit’s use not to be infringing or to amount to passing off. It did so notwithstanding that:
- ‘BEAUTY & THE BAY’ was used by Benefit in the course of trade, without the Claimant’s consent;
- Benefit’s use was found by the Court to be use of a similar trade mark in relation to identical or similar goods or services for which the Claimant had registered ‘BEAUTY BAY’;
- the Court found that ‘BEAUTY & THE BAY’ was being used as a sub-brand as opposed to (as the Defendant had argued) being used purely descriptively; and
- the average consumer would not be paying any particularly high level of attention.
Where the Claimant’s case fell down was on likelihood of confusion – which it had to establish to get home on both trade mark infringement under Article 9(2)(b) of the EU Trade Mark Regulation and passing off.
Benefit argued that there would be no confusion because the relevant product bearing the ‘BEAUTY & THE BAY’ mark was sold in Benefit stores or concessions, on Benefit’s website, and always bore the BENEFIT trade mark. The Court didn’t go with this entirely: the BENEFIT mark appeared on the product, but nowhere near as prominently as the ‘BEAUTY & THE BAY’ mark which took up the majority of the packaging. The Court also agreed with the Claimant that there was a chance people would think the product was a collaboration between the parties.
However, and crucially, when looking at the allegedly infringing product and the registrations overall, the Court concluded that there was no likelihood of confusion, having regard to all relevant factors.
Although the judgment expressly states that the lack of evidence of actual confusion in this case was not determinative, (and even made sense, given that such evidence would be unlikely to come to light), one wonders if – had there been even one example of actual confusion – the decision could have gone the other way.