Opposing Trade Marks: What Victoria Beckham’s Case Taught Us
Trade marks provide brand protection by distinguishing unique products or services used in the course of trade and can be anything from a logo, shape picture, letter, number, word, aspect of packing, phase, smell, picture, shape, or combination of these.
In a recent case, Victoria Beckham attempted opposing trade marks registered by a Sydney-based skincare company which contain the letters “VB”.
Correct Ownership Opposition:
Under section 58 of the Trade Marks Act 1995, the registration of a trade mark may be opposed on the ground that the applicant is not the true owner of the trademark. The owner of a trade mark is whoever the person is that first uses it in Australia, or first files a trade mark application in Australia. In order to succeed on this ground, an opponent must establish:
- That the product or service is identical, or substantially identical to the trade mark relied upon by the Opponent; and
- The Applicant’s goods are the ‘same kind of thing’ as the goods for which the trade mark was used; and
- That a person other than the Applicant had an earlier claim to ownership.
Bad Faith Opposition:
Trade marks may also be opposed on the ground that the application was made in bad faith under section 62A of the Act. This generally applies to situations where persons fall short of standards of acceptable commercial behaviour and include circumstances where:
- Persons have a history of applying for trade marks that are deliberate misspellings of other registered trademarks;
- Persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks; and
- Persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
It is important to note that this is not an exhaustive list and the onus is on the opponent of the registration to establish this bad faith.
Why did Beckham’s Opposition Fail?
IP Australia held that Beckham did not establish a ground for opposition under the Act. Although it was argued that she had been using her own trade mark in Australia since September 2016 for a luxury womenswear and an Estee Lauder cosmetics range, IP Australia were not satisfied that any confusion between the brands would arise.
They found clear differences between the products that did not suffice the ‘substantially identical’ test, which included the stylisation of the VB element in the Sydney Skinlab mark, presence of a horizontal line and addition of the word ‘skinlab’.
The argument that the trade mark was sought in bad faith was also rejected by IP Australia, who said that they could not conclude the company’s use of a female model with long dark hair in connection to their products was a reference to Beckham.
Beckham has lodged an appeal to the Federal Circuit Court.