Victoria Beckham has failed to prevent the registration of two ‘VB’ trade marks, despite the fact that the oppositions were effectively undefended.
The case, which is presently the subject of an appeal, concerned the trade marks depicted below:
The first mark sought registration for a wide range of cosmetics, including skin care products, while the second mark sought registration for beauty and hairdressing services.
Victoria Beckham has used the trade mark VB in relation to businesses trading fashion apparel, accessories and cosmetics. She launched a range of luxury womenswear in 2008 and an e-commerce site in 2013. There has been use of her VB trade mark in relation to cosmetics in Australia, and internationally, since September 2016, following the launch of a range with Estée Lauder.
The evidence presented in respect of cosmetics sales in Australia related only to the period 1 July 2017 to 31 December 2017 and indicated sales totalling AU$557, 491. No sales figures were provided for any period before or after the period mentioned.
As she had no prior registration, Victoria Beckham’s main grounds of opposition were:
- A right to ownership based on prior use of VB
- A likelihood of confusion based on prior reputation
- Filing of the application in bad faith
One of the requirements for a successful claim to ownership is that the trade marks concerned need to be at least substantially identical. Ms Beckham’s ownership claim failed due to differences between VB and the ‘Skinlab’ trade mark depicted above. In respect of the “Salon’ trade mark depicted above, she did not have prior use in Australia for the relevant services.
As regards Ms Beckham’s reputation in VB, the Hearing Officer characterised the evidence of prior reputation, which is assessed as at the filing date of the application (in this case 26 March 2018), as “at best a very limited reputation in Australia for cosmetic products”. However, this was considered sufficient to establish a basis for a prior reputation opposition.
In assessing the likelihood of confusion, the Hearing Officer concluded:
while the Trade Marks and VB Mark are similar due to the presence of the common VB element, I am not satisfied that any confusion between the Trade Marks and the VB would arise due to the reputation of the VB Mark. I reach this conclusion in respect of the Skinlab Mark bearing in mind the limited reputation of the VB Mark in Australia for cosmetics (and only slightly more extensive reputation for fashion goods) and the differences between the respective marks being the stylisation of the Skinlab mark (including the addition of the horizontal line) and the addition of the word Skinlab, which is not a direct reference to the Applicant’s Goods. I reach the same conclusion in respect of the Salon Mark on the same basis and additionally note the difference between the Applicant’s Services and the goods in which the VB Mark has a reputation.
One factor considered in assessing the opponent’s reputation, and may also have influenced the Hearing Officer’s view on the likelihood of confusion, was the fact that Ms Beckham’s trade mark was commonly used in association with other marks, namely VICTORIA BECKHAM and ESTEE LAUDER.
As regards the bad faith ground, the main basis for this claim was the applicant’s use of a pop-up subscription box on its website featuring a slim brunette with long hair, debatably somewhat similar in appearance to Ms Beckham.
The Hearing Officer noted that an allegation of bad faith is a serious claim and found that it had not been established stating:
I am particularly unpersuaded that the Applicant’s use, on its website (which otherwise makes no express or implied reference to the Opponent) of an attractive female model with long dark hair is in any way a reference to the Opponent; given the fame of the Opponent, it would be obvious to most visitors that the model is a completely different woman. Furthermore, the mere fact that a cosmetics company has used an attractive female model with long dark hair in connection with their products is hardly a basis to assert bad faith.
It remains to be seen what the outcome of Victoria Beckham’s appeal will be, although if the applicant continues to play a passive role and does not take part in the appeal proceedings, there is a likelihood of the appeal being successful.
In any event, the difficulties faced by Victoria Beckham would have been much reduced had she registered the trade mark VB at the time she commenced using that trade mark in Australia.
Update – 29 June 2020
The appeal from the Trade Marks Office decision has now been settled by agreement and the trade mark applications opposed by Victoria Beckham have now proceeded to registration. While the terms of the settlement reached and known only to the parties, we would not be surprised if the owner of the applications, VB Skinlab Pty Ltd, has agreed to provide Ms Beckham with a letter of consent if its applications block hers. In Australia, a letter of consent will overcome a citation objection.