“I wanna really really really wanna… take you to court.” VB trade mark dispute heads to the Federal Circuit Court in Australia

Fashion mogul and former Spice Girl, Victoria Beckham has lost the first round of a trade mark battle with Australian skincare brand, VB Skinlab, in relation to two of VB Skinlab’s pending Australian trade mark applications for the “VB” brand filed in March 2018. A full copy of the decision can be found here.

The oppositions
VB Skinlab had applied to register the marks “VB SALON” and “VB SKINLAB” in order to market beauty salon services, skincare products, and cosmetics. The applications were opposed by Victoria Beckham, who claimed that the marks were likely to cause confusion with Victoria Beckham’s own “VB” cosmetics collection amongst consumers. Although the VB mark was not registered in Australia, it was claimed that Victoria Beckham “extensively used and promoted the VB word mark in Australia and overseas in relation to various beauty and fashion related goods, including cosmetics.”

Whilst the Hearing Officer acknowledged that Victoria Beckham has a distinguished reputation in her VB brand for fashion and accessories, the Hearing Officer concluded that this could not be extended to the cosmetics and skincare sector, particularly given the limited sales figures provided by Victoria Beckham’s counsel in this regard.

Similarly, although there was evidence that Victoria Beckham had been using her “VB” mark in Australia since September 2016, it was held by the Hearing Officer that Victoria Beckham’s use of the VB brand for cosmetics in Australia was relatively short and, as such, it had “acquired, at best, a very limited reputation”.

Victoria Beckham also claimed that VB Skinlab’s trade mark applications had been made in bad faith. She contended that VB Skinlab’s website featured a picture of “a slim brunette with long hair” similar to her own image and that its marketing (using the letters “VB”) was purposely attempting to “deceive” consumers.

The Hearing Officer was “particularly unpersuaded” by the argument relating to the brunette woman and could not conclude that the decision of VB Skinlab to adopt and seek to register two marks containing the letters ‘VB’ was a decision made to take advantage of the reputation of the VB mark.

Conclusion
Victoria Beckham has since filed an appeal with the Australian Federal Circuit Court and as such, the conclusion of this case remains to be seen.

Nonetheless, the case serves as a useful reminder that without registering a trade mark, it cannot be assumed that a reputation (even the reputation of a particularly well-known individual, such as Victoria Beckham) can and will provide protection of a related trade mark across any number of territories and sectors.

By Keisha Phippen and Simon Casinader