The Beckham name is famous in the world of football, fashion and beauty, with the power couple involved in many businesses. One of those businesses has been a cosmetic line in Australia sold under the brand name “VB”. Victoria Beckham used her initials, assuming that the power of her name and promotion across her substantial social media presence, including 12.8 million followers on Twitter, 24.9 million followers on Instagram and 3.1 million followers on Facebook would be enough to stamp out any competitors.
Beckham’s business, including its cosmetic and non-cosmetic goods, has been valued at over 100 million GBP. Beckham’s goods were promoted variously under the trade marks VB (“Beckham VB Mark”), VICTORIA BECKHAM and ESTEE LAUDER.
In 2018, a company, VB SKINLAB PTY LTD, applied to register two “VB Trade Marks” of their own. One for VB Skinlab, which covered a range of skincare and cosmetics, and the other VB Salon which included beauty salon services.
These trade marks were published in the Australian Official Journal of Trade marks in August 2018. In November 2018 Beckham opposed the registration of the VB Trade Marks. These businesses have been fighting it out in court, with an appeal hearing heard recently.
Despite the purported strong brand of Victoria Beckham, VB Skinlab Pty Ltd was successful in winning the right to register its VB Trade Marks and thereby continuing to use VB in its business and in relation to its cosmetic goods and salon services.
What this case reinforces is the importance of appropriate and timely trade mark registration. VB Skinlab Pty Ltd was vigilant in protecting its VB Trade Marks by registration with IP Australia and this vigilance has paid off.
How did they win?
A trade mark is likely to cause confusion if the result of its use will cause consumers to wonder if the two goods are closely related or from the same source. It is enough if the ordinary person entertains a reasonable doubt.
Beckham’s argument hinged on the letters VB, asserting that any additional design or words included in the VB Trade Marks be discounted when conducting a comparison of her Beckham VB Mark and the VB Trade Marks. However, this argument was dismissed as it could not satisfy any confusion between the VB Trade Marks and the Beckham VB Mark would arise.
The other key point of difference was the ‘classes’ the respective trade marks were registered in. In particular, while the term ‘skinlab’ has some use in the cosmetics industry, it is not descriptive of Beckhams’s goods. The differences between the respective trade marks were sufficient to conclude that they were not substantially identical.
Of course, the limited reputation of the Beckham VB Mark in Australia for cosmetics (and only slightly more extensive for fashion goods) was a key consideration in determining the outcome.
Although it was agreed there was a common VB element between the two parties, the reputation of Victoria Beckham in the Australian market for cosmetics and salon services was not strong enough to cause any confusion.
Whilst the Hearing Officer noted the significant fame of Beckham and the evidence of substantial promotion of her cosmetics line through free media and her social media presence, the short time of use, limited sales and use of other trade marks (namely VICTORIA BECKHAM and ESTEE LAUDER) to promote her goods satisfied the Hearing Officer that the Beckham VB Mark had, before the relevant date, acquired, at best, a very limited reputation in Australia for cosmetic products.
Outcome
Beckham appealed the decision in March 2020 to the Federal Circuit Court. That appeal was due to be heard on 5 June 2020. However, Judge Julia Baird dismissed the appeal by consent. The parties had agreed to terms of settlement. The orders directed the Registrar of Trade Marks to "take all necessary steps" for the two VB Trade Mark applications from VB Skinlab Pty Ltd to proceed to registration.
Why register a trade mark?
It is important that your customers recognise your branding as a badge of origin of the goods and/or services you offer. The greater your reputation and recognition in the marketplace for your particular goods and/or services provided under your chosen trade mark the better.
There must be NO real likelihood that some people will wonder, or be left in doubt about, whether your goods and/or services come from another trader.
If you have not yet registered your trade mark first you must apply for trade mark registration to enjoy the benefits associated with a registered Trade Mark. Yes, registering a trade mark may alert others to what you are doing, but if you do the process correctly, you can also identify possible challenges and decide on a safer trade mark before you register.
VB Skinlab Pty Ltd were fortunate in this case. The process of registering trade marks can be complex, particularly if you should look at registering across many different categories. It is strongly recommended you seek legal guidance and avoid costly mistakes down the track.