Over the last few years, Victoria Beckham has found herself in the midst of an Australian trade mark dispute concerning her VB brand and two trade mark applications filed by a Sydney-based skincare company, VB Skinlab.
VB Skinlab sought to register the marks VB SKINLAB and VB SALON, with trade mark applications being published in August 2018. Beckham filed oppositions with IP Australia, the nation’s IP Office, on the basis that the applications for VB SKINCARE and VB SALON were likely to cause confusion amongst consumers with her own VB cosmetics collection and that VB Skinlab’s applications had been made in bad faith. The oppositions drew reference to the advertising used by VB Skinlab including allegations that the use of a “slim brunette woman” was similar to Beckham’s own image.
On consideration of the arguments and evidence raised by Beckham’s representative, the IP office did not deny that Victoria Beckham has a significant reputation in her VB brand for fashion and accessories, however considered this could not be extended to the cosmetics and skincare sector, particularly when limited sales figures were provided in support. It was stated that Beckham’s relatively short time of use of the VB brand for cosmetics in Australia was limited since 2016, and accordingly it had “acquired at best a very limited reputation”.
With regard to the ground of opposition alleging bad faith on the part of VB Skinlab and their use of a slim brunette model as part of their advertising campaign, both assertions by Beckham failed. The IP Office commented that VB Skinlab had not acted in an “unscrupulous, underhand or unconscientious” manner and that it would be obvious to consumers that the model in VB Skinlab’s advertisement was a completely different woman to Victoria Beckham.
This action has however not yet reached a conclusion as Beckham has filed an appeal with the Australia’s Federal Circuit Court, the hearing for which commenced last week. The decision at first instance is, however, a stark reminder to businesses that despite perceived global reputation, this cannot be assumed to extend to all territories and across different sectors. Evidence of significant sales and targeted marketing in a given territory being key factors in establishing earlier rights in a brand.