Stop right now, thank you very much – Victoria Beckham's trade mark opposition rejected

What you need to know

• The Australian Trade Marks Office has rejected an opposition brought by former Spice Girl Victoria Beckham on all grounds.
• Beckham lodged an appeal against the decision in the Federal Circuit Court, however the parties have since reached a settlement, the terms of which are not public.

What you need to do

• This decision highlights the importance of registering trade marks early, to avoid having to rely only on reputation in an opposition.

Background

In 2018, VB Skinlab Pty Ltd (VB Skinlab) applied to register the trade marks VB SKINLAB and VB SALON (VB Skinlab Marks) as depicted below:

Registration was sought in classes 3 and 44 for skin products and beauty services, respectively.  The applications were accepted by the Trade Marks Office but subsequently opposed by former Spice Girl turned fashion designer Victoria Beckham.  Beckham's oppositions were brought under sections 42(b), 60 and 62A of the Trade Marks Act 1995 (Cth) (Act) for both marks, and section 58 for VB SKINLAB. Beckham was unsuccessful on all grounds, despite VB Skinlab not filing any evidence.

Beckham uses the unregistered word mark 'VB' (VB Mark) for her luxury fashion and cosmetics businesses.  In September 2016, Beckham launched a highly publicised cosmetics collection with beauty conglomerate Estee Lauder with the products featuring the VB Mark.

Applicant not owner of trade mark (section 58)

In considering Beckham's opposition under section 58, the Hearing Officer was satisfied that Beckham's use of the VB Mark predated use of the VB SKINLAB mark.  The Hearing Officer was also satisfied that the cosmetic goods in question were both 'the same kind of thing'.

However, the Hearing Officer rejected the argument that the two marks were substantially identical.  There were clear differences from a side by side comparison, namely the stylised font of the VB word element in the VB SKINLAB mark, inclusion of the horizontal line and the word 'skinlab'.  Although 'skinlab' is occasionally used in the cosmetics industry, it is not descriptive of VB Skinlab's products and should not be excluded when considering whether the marks are substantially identical.

Trade mark similar to a mark with reputation in Australia (section 60)

The Hearing Officer rejected the argument that Beckham's VB Mark had acquired a reputation in Australia which would be likely to result in confusion if the VB Skinlab Marks were registered.

In assessing the reputation of the VB Mark for the purposes of section 60, the Hearing Officer noted that Beckham had sold cosmetics under the VB Mark for 18 months, with evidence of AUD $557,491 in sales in a 6 month period.

The Hearing Officer emphasised that although Beckham's cosmetics line featured the VB Mark, the marketing collateral referred to the products as 'the Victoria Beckham Collection' and included the ESTEE LAUDER trade mark.  This, combined with the limited sales and relatively short use, led to the conclusion that the VB Mark had acquired at most, a very limited reputation in Australia in relation to cosmetics at the priority date.  The Hearing Officer noted that the VB Mark was more strongly associated with fashion products.

Given the limited reputation of the VB Mark and the visual differences between the marks, the Hearing Officer concluded that confusion between the marks was unlikely.

Trade mark contrary to law (section 42(b))

Beckham contended that use of the VB Skinlab Marks was contrary to law under section 42(b) of the Act, that is, amounting to misleading and deceptive conduct under sections 18 and 29 of the Australian Consumer Law (ACL), or passing off.

The Hearing Officer noted that "likely to deceive or confuse" under section 18 of the ACL demands a higher threshold than under section 60 of the Act.  Given the Hearing Officer had previously found that confusion was unlikely for the purposes of section 60, he concluded that this ground of opposition could not be made out.