The English High Court has recently given judgment in the case Beauty Bay and Dotcom Retail v Benefit Cosmetics  EWHC 1150 (Ch), which serves as a useful reminder of how the courts should assess the likelihood of confusion in infringement cases based on the circumstances in which the allegedly infringing goods are sold.
The background to the case is very straightforward. In 2017, Benefit Cosmetics sold a Christmas gift set containing four cosmetics items in the globe-shaped gift box shown here:
Beauty Bay sued Benefit, alleging this use infringed the former’s UK and EU trade mark registrations for the word mark BEAUTY BAY, which are protected for the following goods and services:
Class 3: Personal care products; skin care preparations; cosmetics.
Class 35: Retail services connected with the sale of fragrances, perfume, toiletries, cosmetics, soaps, shampoos, hair care preparations, skin care preparations, essential oils, sun care and tanning preparations.
The primary legal basis for the infringement claim was that use of BEAUTY & THE BAY was use of a similar mark to BEAUTY BAY, for goods identical or similar to those for which Beauty Bay’s registrations were protected, leading to a likelihood of public confusion. It was accepted by the parties that the goods and services in issue were identical or similar.
Benefit argued that there was no likelihood of public confusion. They submitted that, unlike the BEAUTY BAY trade mark of the Claimant, their use of BEAUTY & THE BAY would be perceived by consumers as a clear play on the expression ‘Beauty and the Beast’, and may be perceived not as a trade mark indicating the origin of the goods to the public, but as mere decoration. They also argued confusion was unlikely due to inter alia the way in which their product had been sold i.e. in environments that reinforced the message on the tin that the trade origin was Benefit, such as in Benefit boutiques, Benefit concessions in larger department stores, via the Benefit website, and via third party websites where it was called “Benefit Beauty & The Bay”.
In its decision, the court observed that the word BENEFIT (or the Benefit Logo) on the base of the product shown in the first photograph above is not nearly as prominent as BEAUTY & THE BAY, which appears in large distinctive lettering on the globe portion of the product. They determined that phonetically and visually the parties’ marks were similar to a moderate degree, though conceptually they were only similar to a low degree, and that the price point of £34.95 suggested that consumers would pay a normal degree of attention when making their purchase.
The case is a useful reminder that an infringement court in the UK will consider all the circumstances surrounding the use of the allegedly infringing mark when assessing whether or not confusion is likely. The fact that another trade mark appears somewhere on the packaging can be relevant. However, this does not automatically mean that the public will perceive the use of the sign complained of as either a) use as decoration rather than as a trade mark, or b) unlikely to cause public confusion, it depends on the circumstances in each case. Further, how and where the goods are sold are important, though not necessarily determinative factors which will be used by the courts. On the facts of present case, the court found the public would not have been confused, and for this reason the infringement case failed, as did a related claim that use of the latter mark constituted passing off Beauty Bays’ unregistered rights in their mark.
N. B There was a further ground of infringement pleaded by Beauty Bay based on reputation in their mark, however the court held this ground should fail also as, inter alia, on confronting the Benefit product, the public would not call Beauty Bay to mind.