“I Wanna Really Really Really Wanna… Take You To Court.” VB Trademark Dispute Heads to the Federal Circuit Court In Australia
Fashion mogul and former Spice Girl, Victoria Beckham lost the first round of a trademark battle with Australian skincare brand, VB Skinlab, in relation to two of VB Skinlab’s pending Australian trademark applications for the “VB” brand filed in March 2018. A full copy of the decision can be found here.
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 trademark 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.
Although Victoria Beckham lodged an appeal against the Australian Federal Circuit Court, which was due to be heard on 5 June, the case has now been settled after the parties reached an undisclosed agreement.
The VB Skinlab marks have since proceeded to registration and Victoria Beckham is pursuing registration of her VB Mark in Australia.
The case serves as a useful reminder that without registering a trademark, 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 trademark across any number of territories and sectors.
By Keisha Phippen and Simon Casinader