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Victoria Beckham has appealed IP Australia’s decision to register two trade marks featuring the letters “VB” for a skincare company. The fashion designer and former member of the worldwide pop sensation the Spice Girls contends that consumers will be misled to believe she has endorsed the products.

background

Victoria Beckham, commonly recognised by her fans and the media by the initials “VB”, has operated under the unregistered word mark “VB” (VB Mark) in fashion, accessories and cosmetics since 2008. In 2016, Beckham commenced using the VB Mark in relation to cosmetic goods both internationally and in Australia.

Beckham has a substantial social media following and has developed a significant reputation in the VB Mark for fashion and accessories. The launch of her cosmetics range also received significant media and public attention, and was promoted across Beckham’s social media platforms.

In 2018, VB Skinlab Pty Ltd (VB Skinlab) sought to register two trade marks – VB SALON and VB SKINLAB (depicted below) – for beauty salon services, skincare products and cosmetics (VB Skinlab marks).

Following advertisement of the trade marks, Beckham opposed the trade marks, raising grounds under sections 42(b), 60 and 62A of the Trade Marks Act 1995 (Cth) (the Act) for both marks and an additional ground of opposition under section 58 for the VB SKINLAB mark.

opposition

Beckham was unsuccessful in her opposition of the registration of the VB Skinlab marks, despite VB Skinlab not filing any evidence in answer or any written submissions.

When considering the grounds under section 58 of the Act, the Hearing Officer found that Beckham had established that the goods claimed under the VB SKINLAB mark were the ‘same kind of thing’ as the goods for which the VB Mark was used. The Hearing Officer was also satisfied that the use of the VB Mark preceded the VB SKINLAB mark. However, the Hearing Officer was not satisfied that the VB SKINLAB mark was substantially identical to the VB Mark. Beckham argued in her opposition that the stylisation of the VB element, the presence of the horizontal line and the addition of the word ‘skinlab’ should be discounted. The Hearing Officer considered that whilst the term ‘skinlab’ has some use in the cosmetics industry, it does not describe VB Skinlab’s goods and was therefore not appropriate to ignore.

In the opposition, Beckham relied on section 60 of the Act to assert that the VB Mark had acquired a reputation in Australia and that the VB Skinlab marks should not be registered. Despite Beckham’s significant fame and the promotion of the cosmetics line through free media and Beckham’s social media platforms, the Hearing Officer dismissed this ground of opposition. He considered the short time of use of the VB Mark together with the limited sales and combined use with other marks during promotion of the goods meant the VB Mark had, at best, acquired a very limited reputation in Australia at the relevant date. Although this is sufficient for the requirements under section 60(a) of the Act, Beckham also needed to establish that because of the reputation of the VB Mark, consumers would likely be deceived or confused from the use of the VB Skinlab marks. The Hearing Officer was not satisfied that there would be any confusion between the VB Mark and the VB Skinlab marks due to the former’s reputation. The key factors weighing the Hearing Officer’s ultimate decision were the limited reputation of the VB Mark and the differences between the marks.

The Hearing Officer determined that Beckham also failed to establish the ground of opposition under section 42(b) of the Act. Beckham raised sections 18 and 29 of the Australian Consumer Law and the common law tort of passing off to establish that the VB Skinlab marks were contrary to law. However, section 18 of the Australian Consumer Law has a more stringent test than for deception or confusion under section 60 of the Act, and therefore this ground could not be established. Further, where a trade mark does not run afoul of section 18, it also will not run afoul of section 29 of the Australian Consumer Law.  On this basis, Beckham did not establish the ground of opposition under section 42(b).

Beckham argued that VB Skinlab was acting in bad faith by attempting to register the VB Skinlab marks. Beckham relied on the reputation of the VB Mark and the similarity of goods, positing that VB Skinlab knew about Beckham, Beckham’s goods, Beckham’s marks or Beckham’s reputation at the filing date. The Hearing Officer was unpersuaded that the application to register the VB Skinlab marks was made to take advantage of the limited reputation of the VB Mark in Australia. Consequently, Beckham failed to establish the ground of opposition under section 62A of the Act.

appeal

Beckham has lodged an appeal, which is currently being heard in the Federal Circuit Court. Given the issues raised by the Hearing Officer, it is likely Beckham will need to present further evidence to establish the grounds of opposition. Beckham may face further difficulty if VB Skincare decides to play an active role in the appeal proceedings.

After filing evidence in support during the opposition, Beckham also applied to register a logo version of the VB Mark (depicted below), which is currently pending examination.

Prior registration of the logo version of the VB Mark still might not have swayed the Hearing Officer. Given the visual differences, the Hearing Officer may have contended that the VB Skinlab marks were not deceptively similar. Regardless, prior registration of either the word or logo version of the VB Mark may have been the only way Beckham could have effectively prevented VB Skinlab from attaining registration. In particular, if Beckham had registered a series trade mark comprising the variations of the VB Mark, this may have given more weight to the importance of the VB element.

key learnings

This decision underscores the importance of registering marks early to avoid the need to rely on reputation. Further, when seeking to establish a ground of opposition under section 60 of the Act, reputation does not necessarily result in deception or confusion between marks, particularly where there are differences between the marks and the reputation is limited.

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Former Spice Girl Victoria Beckham appeals decision over ‘VB’ trade mark

11 May 2020
emma berry

Victoria Beckham has appealed IP Australia’s decision to register two trade marks featuring the letters “VB” for a skincare company. The fashion designer and former member of the worldwide pop sensation the Spice Girls contends that consumers will be misled to believe she has endorsed the products.

background

Victoria Beckham, commonly recognised by her fans and the media by the initials “VB”, has operated under the unregistered word mark “VB” (VB Mark) in fashion, accessories and cosmetics since 2008. In 2016, Beckham commenced using the VB Mark in relation to cosmetic goods both internationally and in Australia.

Beckham has a substantial social media following and has developed a significant reputation in the VB Mark for fashion and accessories. The launch of her cosmetics range also received significant media and public attention, and was promoted across Beckham’s social media platforms.

In 2018, VB Skinlab Pty Ltd (VB Skinlab) sought to register two trade marks – VB SALON and VB SKINLAB (depicted below) – for beauty salon services, skincare products and cosmetics (VB Skinlab marks).

Following advertisement of the trade marks, Beckham opposed the trade marks, raising grounds under sections 42(b), 60 and 62A of the Trade Marks Act 1995 (Cth) (the Act) for both marks and an additional ground of opposition under section 58 for the VB SKINLAB mark.

opposition

Beckham was unsuccessful in her opposition of the registration of the VB Skinlab marks, despite VB Skinlab not filing any evidence in answer or any written submissions.

When considering the grounds under section 58 of the Act, the Hearing Officer found that Beckham had established that the goods claimed under the VB SKINLAB mark were the ‘same kind of thing’ as the goods for which the VB Mark was used. The Hearing Officer was also satisfied that the use of the VB Mark preceded the VB SKINLAB mark. However, the Hearing Officer was not satisfied that the VB SKINLAB mark was substantially identical to the VB Mark. Beckham argued in her opposition that the stylisation of the VB element, the presence of the horizontal line and the addition of the word ‘skinlab’ should be discounted. The Hearing Officer considered that whilst the term ‘skinlab’ has some use in the cosmetics industry, it does not describe VB Skinlab’s goods and was therefore not appropriate to ignore.

In the opposition, Beckham relied on section 60 of the Act to assert that the VB Mark had acquired a reputation in Australia and that the VB Skinlab marks should not be registered. Despite Beckham’s significant fame and the promotion of the cosmetics line through free media and Beckham’s social media platforms, the Hearing Officer dismissed this ground of opposition. He considered the short time of use of the VB Mark together with the limited sales and combined use with other marks during promotion of the goods meant the VB Mark had, at best, acquired a very limited reputation in Australia at the relevant date. Although this is sufficient for the requirements under section 60(a) of the Act, Beckham also needed to establish that because of the reputation of the VB Mark, consumers would likely be deceived or confused from the use of the VB Skinlab marks. The Hearing Officer was not satisfied that there would be any confusion between the VB Mark and the VB Skinlab marks due to the former’s reputation. The key factors weighing the Hearing Officer’s ultimate decision were the limited reputation of the VB Mark and the differences between the marks.

The Hearing Officer determined that Beckham also failed to establish the ground of opposition under section 42(b) of the Act. Beckham raised sections 18 and 29 of the Australian Consumer Law and the common law tort of passing off to establish that the VB Skinlab marks were contrary to law. However, section 18 of the Australian Consumer Law has a more stringent test than for deception or confusion under section 60 of the Act, and therefore this ground could not be established. Further, where a trade mark does not run afoul of section 18, it also will not run afoul of section 29 of the Australian Consumer Law.  On this basis, Beckham did not establish the ground of opposition under section 42(b).

Beckham argued that VB Skinlab was acting in bad faith by attempting to register the VB Skinlab marks. Beckham relied on the reputation of the VB Mark and the similarity of goods, positing that VB Skinlab knew about Beckham, Beckham’s goods, Beckham’s marks or Beckham’s reputation at the filing date. The Hearing Officer was unpersuaded that the application to register the VB Skinlab marks was made to take advantage of the limited reputation of the VB Mark in Australia. Consequently, Beckham failed to establish the ground of opposition under section 62A of the Act.

appeal

Beckham has lodged an appeal, which is currently being heard in the Federal Circuit Court. Given the issues raised by the Hearing Officer, it is likely Beckham will need to present further evidence to establish the grounds of opposition. Beckham may face further difficulty if VB Skincare decides to play an active role in the appeal proceedings.

After filing evidence in support during the opposition, Beckham also applied to register a logo version of the VB Mark (depicted below), which is currently pending examination.

Prior registration of the logo version of the VB Mark still might not have swayed the Hearing Officer. Given the visual differences, the Hearing Officer may have contended that the VB Skinlab marks were not deceptively similar. Regardless, prior registration of either the word or logo version of the VB Mark may have been the only way Beckham could have effectively prevented VB Skinlab from attaining registration. In particular, if Beckham had registered a series trade mark comprising the variations of the VB Mark, this may have given more weight to the importance of the VB element.

key learnings

This decision underscores the importance of registering marks early to avoid the need to rely on reputation. Further, when seeking to establish a ground of opposition under section 60 of the Act, reputation does not necessarily result in deception or confusion between marks, particularly where there are differences between the marks and the reputation is limited.