In an interesting matter for the Australian Trade Marks Office, global icon Victoria Beckham has sought to rely on her reputation in relation to her initials ‘VB’ in opposing two recent trade mark applications by a third party, VB SKINLAB PTY LTD, for its logo’s ‘VB SKINLAB’ and ‘VB SALON (‘VB SKINLAB’)’.
The VB SKINLAB marks were applied for by VB SKINLAB PTY LTD in class 3 and 44, respectively, and sought to cover cosmetic and beauty products and salon services in relation to same. The Australian Trade Marks Office initially examined the trade marks and issued clear examination reports in April 2018, thus allowing the VB SKINLAB marks to proceed to advertisement in the Australian Journal of Trade Marks for a period of 2 months (‘Opposition Period’). During the Opposition Period, the VB SKINLAB marks were opposed by Victoria Beckham on the following grounds:
- that the Applicant was not owner of trade mark (Section 58 of the Trade Marks Act 1995 (Cth) (‘TMA’));
- that the Trade mark was similar to a trade mark that had acquired a reputation in Australia (Section 60 TMA);
- that the Trade mark was scandalous or its use contrary to law (Section 42 TMA); and
- that the Application was made in bad faith (Section 62A).
Notably, Victoria Beckham did not have a registered trade mark in Australia for her newly launched beauty line, aptly titled ‘VICTORIA BECKHAM BEAUTY’ but commonly also associated with her moniker, VB. In light of this, one of the main contentions being made by Victoria Beckham in this opposition was that the VB SKINLAB marks were likely to cause confusion with consumers in the marketplace on the basis of her use of her initials ‘VB’ as trade mark in Australia and internationally in relation to her beauty line as well as her fashion label.
The Australian Trade Marks Office Hearing Officer agreed that Victoria Beckham did have a distinguishable reputation for the VB mark in relation to fashion and accessories, however, the limited sales figures which were provided by Victoria Beckham in relation to her beauty line resulted in the Hearings Officer concluding that a distinguishable reputation could not be found in relation to the VB mark with respect to beauty and cosmetics. In addition, whilst Victoria Beckham was able to show use of ‘VB’ since 2016, the Hearings Officer further commented that her use of ‘VB’ in relation to her beauty line had only acquired a very limited reputation, given that such use by Victoria Beckham was relatively short, especially when compared to her use of ‘VB’ in relation to fashion and accessories.
Interestingly, Victoria Beckham also sought to mount arguments in respect of bad faith against VB SKINLABS, submitting that VB SKINLAB’s website (http://www.vbskinlab.com.au/) “contains a subscribe box that features a slim brunette with long hair” which she argued was “similar to the image of [Victoria Beckham]” and therefore an attempt by VB SKINLABS to deceive consumers in this regard. The Hearings Officer was however ‘unpersuaded’ by this contention.
In the end, the Hearings Officer did not find in favor of Victoria Beckham in her opposition of the VB SKINLAB’s trade marks, and dismissed her opposition against VB SKINLAB’s trade marks, thus allowing VB SKINLAB’s trade marks to proceed to registration. Victoria Beckham then sought to appeal this decision to the Australian Federal Circuit Court however, recent news reports indicate that the case has since been settled out of court and so this may impact on the status of the VB SKINLAB trade mark applications further.
Overall, the arguments raised by Victoria Beckham, and the response to same by the Hearings Officer, are very interesting when considering the extent of evidence required to substantiate reputation in an opposing trade mark in a trade mark opposition, particularly when relying on such grounds to oppose another trade mark application and where there is no trade mark registration in Australia. It also highlights the importance and benefits of obtaining a trade mark registration as part of your brand protection strategy. Pointon Partners have extensive experience in assisting brands and individuals with brand protection including trade mark applications and other intellectual property protection mechanisms. Accordingly, please do not hesitate to contact our Intellectual Property team to assist you.