Rival products sometimes bear similar names but, when considering whether or not that is likely to cause confusion, judges place themselves in the shoes of average consumers. The High Court did just that in resolving a trade mark dispute in the cosmetics industry.

An online retailer marketed cosmetics and beauty products under the name 'Beauty Bay', which was protected by UK and EU trade marks. It was licensed to exploit the trade marks by their proprietor. In concert with the proprietor, the retailer launched infringement and passing off proceedings after a rival marketed a Christmas cosmetics gift set emblazoned with the logo 'Beauty and the Bay'.

In ruling on the matter, the Court accepted that the rival's logo was inspired by San Francisco Bay and was a play on the Beauty and the Beast fairy tale. There was a medium degree of similarity between the logo and the trade marks, and the absence of any actual evidence of customer confusion was not decisive in that such incidents would have been very difficult to detect.

In rejecting the infringement claim, however, the Court found that no likelihood of confusion had been established. It had not been shown that the average consumer would perceive a link between the logo and the retailer. The nature and use of the logo, in the context of the gift set's colour and style of decoration, were unlikely to bring the retailer to the minds of ordinary purchasers of cosmetics.

In also dismissing the passing off claim, the Court noted that it was not a case of the rival riding on the coat-tails of the retailer's goodwill in the trade marks. The choice of the logo owed nothing to the trade marks or their reputation. On the evidence, there had been no misrepresentation to average consumers.

Contact Julian Milan on 0808 166 8827 for advice on all aspects of intellectual property protection. Or alternatively email j.milan@sydneymitchell.co.uk

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