Former Spice Girl and fashion designer Victoria Beckham recently appealed IP Australia’s decision to register two trade marks featuring the initials “VB” for use on cosmetics by a Sydney-based skincare company VB Skinlab Pty Ltd. Beckham contends that the trade marks “would be likely to deceive or cause confusion” in Australia because her fashion and cosmetic products also use the initials VB.
Background
Victoria Beckham has used the unregistered word mark “VB” (VB Mark) in relation to fashion apparel, accessories and cosmetics since 2008. In September 2016 Beckham began using the VB Mark in relation to cosmetic goods in Australia and internationally following the launch of a luxury line of cosmetics in collaboration with Estée Lauder.
Beckham promoted her business through her substantial social media presence, with 12.8 million followers on Twitter, 24.9 million followers on Instagram and 3.1 million followers on Facebook.
In October 2018, VB Skinlab Pty Ltd (VB Skinlab) sought to register two trade marks – VB SALON and VB SKINLAB – for beauty salon services, skincare products and a wide range of cosmetics (VB Skinlab Marks), as depicted below:
Following advertisement of the VB Skinlab Marks, Beckham opposed both trade marks on the following grounds under the Trade Marks Act 1995 (Cth) (the Act):
- Use of the VB Skinlab Marks would be contrary to law;[1]
- A likelihood of confusion based on prior reputation;[2] and
- Filing of the application in bad faith.[3]
Beckham also opposed the Skinlab Mark on the ground VB Skinlab is not the owner of the trade mark (being the VB Mark) in Australia.[4]
The Beckham Opposition Decision
Beckham failed in her opposition against the registration of the VB Skinlab Marks, despite VB Skinlab not filing any evidence or written submissions to defend the oppositions. In rejecting Beckham’s claim, the Hearing Officer found the following:
- There were “clear differences” in the trade marks. In particular, the Hearing Officer noted the following differences: the “stylisation of the VB element of the Skinlab mark, the presence of the horizontal line, and the addition of the word ‘skinlab’.”
- Beckham’s use of the VB mark for cosmetics was over a relatively short period of time and, as such, she had only “acquired, at best, a very limited reputation in Australia”.
- Beckham’s trade mark was commonly used in association with the other marks, namely VICTORIA BECKHAM and ESTEE LAUDER.
- Beckham had failed to establish that VB Skinlab trade mark applications had been made in bad faith, as VB Skinlab had featured an image of a “slim brunette woman” similar to Beckham’s own image on their website.
A full copy of IP Australia’s decision can be found here.
Conclusion
As Beckham has filed an appeal with the Australian Federal Circuit Court, the opposition has not yet reached a conclusion. In order to succeed in her claim, Beckham will need to provide additional evidence to substantiate the reputation of the VB Mark and demonstrate that VB Skinlab intended to associate themselves with Beckham through their VB-branding.
[1] Trade Mark Act 1995 (Cth) (the Act), s 42(b).
[2] The Act, s 60.
[3] The Act, s 62A.
[4] The Act, s 58.