Beauty Bay Ltd & Anor v Benefit Cosmetics Ltd

Trade mark infringement requires an objective use of a sign which affects the functions of the mark; the user’s subjective intention is not decisive. Likelihood of confusion is assessed globally through the eyes of the relevant average consumers, considering the sign in its actual context and allowing for economic links such as licensing or collaboration. Absence of actual confusion is not determinative.

For marks with a reputation, a link must be established before detriment or unfair advantage can arise. Dilution requires actual or seriously likely injury, including a change in consumer economic behaviour. A descriptive-use defence fails where the sign also performs an origin function. Passing off likewise requires a misrepresentation likely to deceive.

Beauty Bay Ltd and Dotcom Retail Ltd, referred to collectively as BBL, owned and used registered UK and EU trade marks for BEAUTY BAY in relation to cosmetics and retail services. Benefit Cosmetics Ltd marketed a Christmas gift set under the sign BEAUTY & THE BAY.

BBL alleged infringement under Articles 9(2)(b) and 9(2)(c) of the European Parliament and Council Regulation (EU) 2017/1001, and passing off. Benefit relied on the contextual presentation of the sign, its BENEFIT house mark, the absence of actual confusion, and the Article 14 defence.

The central questions were whether the sign was relevant use, whether there was a likelihood of confusion or a link with the registered marks, whether detriment or unfair advantage was established, whether the use was with due cause and honest practices, and whether there was passing off.

1. Trade mark infringement under Article 9(2)(b). The use of a sign may affect the functions of a trade mark by objectively indicating origin, regardless of the user’s subjective purpose. The sign BEAUTY & THE BAY performed a sub-brand function even though the BENEFIT mark also appeared on the product. The goods were identical or similar, and the sign was used in relation to them.
2. Likelihood of confusion required a global appreciation, considering each relevant category of average consumer rather than averaging consumers together. The assessment had to account for the sign’s full commercial context, including gift purchasing, online sales and displays outside Benefit’s immediate staffed environment. The marks and sign had medium visual and conceptual similarity but low aural similarity. The average consumer would exercise a normal degree of care.
3. The absence of actual confusion was not determinative. In the circumstances, any confusion might go undetected. Nevertheless, considering all relevant factors, there was no likelihood of confusion. The Article 9(2)(b) claim therefore failed.
4. Article 9(2)(c). BBL had established a reputation in the relevant UK registrations. However, the necessary link between BEAUTY & THE BAY and BEAUTY BAY was not established. There was consequently no infringement. In any event, the evidence did not establish detriment to distinctive character or repute, a change in consumer economic behaviour, or unfair advantage. The product was not shown to have taken advantage of the marks, still less unfairly.
5. The Article 14 defence also failed because the sign was not shown to be merely descriptive or decorative and retained an origin function. The court further indicated that, had injury or confusion been established, honest practices would not have been proved because Benefit had not established that the possibility of conflict was unknown to it.
6. The passing-off claim failed because the use did not amount to a misrepresentation likely to deceive. The action for infringement under Articles 9(2)(b) and 9(2)(c), and for passing off, was dismissed.