Bed Bath & Beyond loses trademark battle with Bed Bath 'N' Table

Wednesday, 19 July 2023

Bed Bath & Beyond has a similar business and the same names to the US retailer and similar name to Bed Bath N Table.

New Zealand linen and homewares retailer Bed Bath & Beyond (BBB) has lost its trademark battle against an Australian competitor with a similar name.

The High Court ruled in favour of Bed Bath ‘N’ Table (BBT) in a number of intellectual property-related claims.

Bed Bath & Beyond is known for its green branding and furniture, linen and decor, as is Bed Bath ‘N’ Table, which also has green branding, similar branding font and products.

For years Bed Bath & Beyond and Bed Bath ‘N’ Table have been competing in the New Zealand retail market, both operating a chain of stores.

In 2018, Bed, Bath & Beyond, which was once known as Linen for Less, filed legal proceedings against Bed Bath ‘N’ Table, alleging that the registration of the Australian business’s 2014 trademark was invalid and its use in New Zealand infringed its trademarks.

It also made claims of passing off and breach of the Fair Trading Act.

Bed Bath & Beyond registered the word mark “Bed Bath & Beyond” in1994, with another identical trade mark (in relation to a wider class of goods and services) registered in 2014.

Bed Bath ‘N’ Table had been the registered owner of the word mark “Bed Bath ‘N’ Table” in Australia since 1976, and in New Zealand since 2014.

The retailers went head-to-head in a hearing in the Wellington High Court.

In response to the claims, Bed Bath ‘N’ Table pleaded a number of positive defences, including honest concurrent use.

It also counterclaimed that, if the court were to conclude that the Bed Bath & Beyond and Bed Bath ‘N’ Table marks were confusingly similar, then it was the Bed Bath & Beyond registered trademarks that were invalid.

Retail giant Bed Bath & Beyond has filed for bankruptcy in the United States, but its namesake in New Zealand is an unrelated company.

The High Court threw out Bed Bath & Beyond’s claims, and said it was satisfied that the concurrent use of the two marks was unlikely to cause substantial levels of confusion in the New Zealand market.

“The court found that, based on the law relating to international trademark registration, the BBT 2014 trademark had priority over the BBB 2014 trademark. The assessment of invalidity and/or infringement was required therefore to focus on the BBB 1994 trademark,” the court decision document stated.

“The court accepted that the BBB (1994) and the BBT (2014) trademarks, and the goods and services to which each relate, were undoubtedly similar. But it found much of the confusion that might be expected to arise from that similarity was due to the use of the non-distinctive or elliptically descriptive words ‘bed’ and ‘bath’. The Commissioner of Trade Marks had recognised this in 1994 when the BBB trademark was registered with a disclaimer, which effectively permitted the use by others of those words.

“Most reasonable consumers in the relevant market would recognise that ‘bed' and ‘bath’ were indirectly descriptive of the characteristics of the goods and services provided by BBB (and BBT) and so would be more attuned to small differences between the marks when considering them as signs of origin. To the extent some consumers may be confused, that is the price to be paid for the relative nondistinctiveness.”

Bed Bath & Beyond provided evidence of confusion to the court, primarily in the form of surveys from store staff, but this was not accepted as “indicating confusion amongst a substantial number of consumers”.

Bed Bath & Beyond chief executive Trevor Brown declined to comment when contacted by Stuff.

“By the use of its 2014 trademark, BBT had done no more than represent the truth, which was that its mark was associated with its own business and the goods and services it provided. Moreover, the ‘get ups’ adopted by both BBB and BBT, including the use of green in their respective logos and signage, were not especially similar and made it less likely that customers would be misled or confused,” the court ruled.

Once known as Linen for Less, Bed Bath & Beyond changed its name years ago, taking advantage of the name not being trademarked here and to leverage the profile of the US homewares giant of the same name in the United States.