It was held that there was no likelihood of confusion between the products of a US cosmetics company name ‘Beauty & The Bay’ and a UK and EU trade mark, ‘Beauty Bay’ and ‘Beautybay’. This included the decision that there was no infringement of the trade marks or anything which amounted to passing off.
Class 3 for skin care products and retail services in class 35 is what the claimant registered the marks under. The defendant had started selling a Christmas box that comprised of cosmetics in a globe shaped box and distributed them throughout the UK and Europe through its UK subsidiary.
The claimant reacted and filed a complaint that the defendant had infringed on its trade marks as well as passing off, however the court held that this was not the case. The law that the claimant relied on was art.9(2)(b) and art.9(2)(c) of Regulation 2017/1001.
Firstly, article 9(2)(b) was explored and the considered by Judge Roger Wyand QC that the claimant would have to show that the protected sign was (a) be used by a third party within the relevant territory; (b) be used in the course of trade; (c) be used without the proprietor’s consent; (d) be identical or similar to the trade mark; (e) be used in relation to goods or services which were identical or similar to those for which the trade mark was registered; (f) give rise to a likelihood of confusion. This was following Comic Enterprises Ltd v Twentieth Century Fox Film Corp  EWCA Civ 41.
Article 9(2)(c) was then considered alongside this, which again followed Comic Enterprises Ltd v Twentieth Century Fox Film Corp where it was considered whether (a) the registered trade mark had to have a reputation in the relevant territory; (b) there had to be use of a sign by a third party in the relevant territory; (c) the use had to be in the course of trade; (d) use had to be without the consent of the proprietor; (e) use had to be of a sign which was identical with or similar to the trade mark; (f) use had to be in relation to goods or services; (g) use had to give rise to a link between the sign and the trade mark in the mind of the average consumer; (h) use had to give rise to one of three types of injury: detriment to the distinctive character of the trade mark, detriment to the repute of the trade mark, or unfair advantage being taken of the distinctive character or repute of the trade mark; (i) use had to be without due cause.
The judge then considered the above and whether there was any likelihood of confusion, whether in turn there was a link between the two and of course if the two marks were visually and conceptually similar. It was held that there was a medium degree of similarity between the marks and the goods and services which are being marketed under the brands were also the same. However, it was held that this was not enough to provide any risk of a likelihood of confusion by the public. It was lastly considered that the degree of similarity was not high enough to suggest that the average consumer would consider there to be a link between the two and in turn there was no unfair advantage issue present from the distinctive character or reputation of the claimant’s marks. This also meant that if the above could not be satisfied then there could be no passing off so any claim for misrepresentation to the general public also failed.
Full judgement can be seen at Beauty Bay Ltd v Benefit Cosmetics Ltd  EWHC 1150 (Ch).