Spicing up IP

Spicing up IP

For most Australians “VB” conjures up images of an Aussie backyard BBQ, cricket and quenching a “hard earned thirst” with “a big cold beer, and the best cold beer is Vic. Victoria Bitter”. However, the initials “VB” are also shared with UK fashion designer and former Spice Girl Ms Victoria Beckham.  

In this instalment of Solubility’s 2020 Licensing Year in Review series, Louise Brunero discusses

Posh Spice uses her initials to market a luxury womenswear range and a line of cosmetics developed in collaboration with beauty giant Estée Lauder.  It is this “VB” who has taken a Sydney-based skincare company to court over two trademark applications for logos containing  the letters “VB”, arguing the logos “would be likely to deceive or confuse Australian consumers … into believing” its products were sold or “sponsored” by the former Spice Girls star.

Ms Beckham’s opposition to the registration of the trademarks was unsuccessful.  Despite IP Australia finding that:

  • Ms Beckham had continuously used the VB Mark in relation to cosmetic goods in Australia and internationally since September 2016;
  • Ms Beckham also had a significant reputation in the VB Mark for fashion apparel and accessories, having used the VB Mark in Australia since the launch of the 2016 Autumn Winter Collection, approximately two years before the filing date of the logos;
  • since Ms Beckham’s first use, she has used trade marks comprised of the letters VB in Australia in relation to, inter alia, cosmetics goods;
  • at the time of Ms Beckham’s first use, no other person had used or applied to register in Australia a trade mark comprised of the letters VB, or substantially identical trade mar (sic), in relation to cosmetics goods or goods of the same kind;
  • at all relevant times, including the Filing Date, Ms Beckham has been the owner of various VB Marks in relation to, inter alia, cosmetics goods and goods of the same kind;
  • in comparing the relevant marks side by side there is a total impression of resemblance such that the differences between them are slight, having regard to their common essential elements or dominant cognitive cues, specifically the letters VB; and
  • the VB Marks are substantially identical to the logos,

it was not satisfied that any confusion would arise between the logos and Ms Beckham’s own VB trade mark.  IP Australia also rejected the argument that the Sydney company was acting in bad faith, stating that it was unpersuaded that the company’s use on its website of a photo “of an attractive female model with long dark hair” was “in any way a reference” to the star.  The Delegate’s decision is available here.  Interestingly the decision seems to reveal that Ms Beckham has not registered any of the trade marks on which she based her opposition.  The decision also does not seem to attach relevance to Ms Beckham bringing the proceedings in her own name whilst tending evidence of use and sales figures, in the form of a Declaration made by the Chief Executive Officer of the corporate entity named Victoria Beckham Limited.

Ms Beckham has now reportedly lodged an appeal in the Federal Circuit Court asking the court to set aside IP Australia’s decision, reject the Sydney company’s application to register the trade marks, and order the company to pay her costs of the appeal and the original hearing. 

A preliminary hearing is set down for Wednesday this week and we will keep you updated as more on this case unfolds.

Source: Twitter