October 20, 2020

Volume X, Number 294

October 19, 2020

Subscribe to Latest Legal News and Analysis

“I Wanna Really Really Really Wanna . . . Take you to Court." VB Trademark Dispute Heads to Federal Circuit 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.

Copyright 2020 K & L GatesNational Law Review, Volume X, Number 126

TRENDING LEGAL ANALYSIS


About this Author

Keisha Phippen IP Procurement & Portfolio Management Attorney K&L Gates London, UK
Associate

Keisha Phippen is an associate in the firm’s London office where she is a member of the IP procurement and portfolio management practice group.

Professional Background

Prior to joining the firm Ms. Phippen served as a commercial lawyer at a full service law firm based in the UK where she provided specialist advice on a range of commercial matters; drafted and developed a wide variety of standard and bespoke commercial documents; and supported clients with all-party contractual negotiations through to post completion queries.

Primary Practice

  • IP...

44.(0)20.7360.8267
Simon Casinader, KLGates, IP lawyer
Senior Associate

Mr. Casinader is a Senior Associate in Melbourne's intellectual property team with a range of experience protecting and enforcing intellectual property rights. This experience includes developing and enforcing brand protection strategies on matters for trade mark, copyright and design owners, and providing contentious and non-contentious advice in relation to all aspects of intellectual property law.

Mr. Casinader has extensive experience prosecuting Australian, New Zealand and international trade mark applications as well as trade mark and patent opposition proceedings before IP Australia.

Further, Mr. Casinader has represented clients in legal proceedings concerning patent, trade mark, design and copyright infringement, as well as the misuse of confidential information and trade practices cases. Mr Casinader has also been involved in a number of complex patent litigation matters before the Federal Court of Australia.

He also assists clients with advice on brand name and product clearance, domain name recovery, customs programs, eBay anti-counterfeiting programs and the filing and prosecution of registered designs.

+61.3.9640.4367