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Beauty And The Beast – A Tale Of (Trade Mark Infringement) As Old As Time

IPEC has ruled over the recent dispute between Beauty Bay (claimant) and Benefit Cosmetics (defendant) which arose after Benefit sold a Christmas gift set contained in a globe shaped box displaying the words “Beauty and the Bay”. The gift set was part of a 13 product collection celebrating 50 years since the Summer of Love and the company’s San Francisco heritage which included products like “Glam Francisco”, “I Left my Heart in Tan Francisco” and “B.Right by the Bay”.

The Claimant alleged that by selling the “Beauty by the Bay” gift set Benefit had infringed their Beauty Bay trade marks, taken unfair advantage of their reputation, created detriment to the distinctive character and committed passing off. Benefit refuted these claims stating:

a) the mark appeared prominently on the base of the box itself indicating to consumers the product origin 
b) the average consumer would understand that “Beauty & the Bay” was a play on the expression “Beauty and the Beast”, and 
c) no consumer would reasonably conclude that BEAUTY & THE BAY has any other commercial origin other than Benefit.

Article 9(2)(b) of the European Union Trade Mark Regulation states that a trade mark owner is entitled to prevent third parties which do not have its consent from using a similar/identical mark in the course of trade if there exists a likelihood of confusion on part of the public with the registered trade mark. Case law provides a number of conditions that must be satisfied for there to be an infringement, and in the present case the relevant conditions were:

a) it must be in relation to goods or services which are identical with or similar to those for which the trade mark is registered, and
b) it must give rise to a likelihood of confusion.

The court found that the respective goods at issue were identical, and considered the ‘Magic Formula’ sales treatment, which Benefit claimed would ensure that customers would be aware that the product in the Benefit concession were only Benefit’s own product, did not reduce the likelihood of confusion. This is due to the Court concluding that whilst some shoppers would receive the ‘Magic Formula’ treatment, it is extremely unlikely that all, or even all, customers would receive the personal attention.

The Court also held that Beauty Bay was not unfounded in submitting that the average consumer might reasonably believe that the product was a collaboration between the two beauty brands (especially as both brands had previously been involved in collaborative products). However, when taking into consideration all relevant factors at issue, including placement of the product, the fact it was part of a 13 product collection and Benefit’s logo being on the product (even if much smaller than the ‘Beauty and the Bay’) it found that there was no likelihood of confusion and as such no infringement of the trade marks was found. The court also excluded passing off as no misrepresentation could be established.

While this ruling is in line with the current interpretation of the law, it provides as more clarity and evidence on how the courts will analyse a claim for trade mark infringement and passing off, especially in the cosmetics industry, and should provide companies with additional guidance when they are considering packaging, marketing and promotions of their products.

Click here for the Judgement.

Copyright 2020 K & L GatesNational Law Review, Volume IX, Number 196


About this Author

Simon Casinader, KLGates, IP lawyer
Senior Associate

Mr. Casinader is a Senior Associate in Melbourne's intellectual property team with a range of experience protecting and enforcing intellectual property rights. This experience includes developing and enforcing brand protection strategies on matters for trade mark, copyright and design owners, and providing contentious and non-contentious advice in relation to all aspects of intellectual property law.

Mr. Casinader has extensive experience prosecuting Australian, New Zealand and international trade mark applications as well as trade mark and patent opposition proceedings before IP...

Daniel R. Cartmell Trainee Solicitor K&L Gates Law Firm
Trainee Solicitor

Daniel Cartmell is a trainee solicitor in the firm’s London office. He is currently gaining experience in the construction and infrastructure group.

Prior to joining the firm, Mr. Cartmell previously worked as a paralegal at an international law firm, working on subrogated recoveries. In addition he worked at K&L Gates as part of the vacation scheme program.