Victoria Beckham v VB Skinlab Pty Ltd

This matter concerned oppositions filed by Victoria Beckham Limited (the Opponent) against two trade mark applications by VB Skinlab Pty Ltd (the Applicant). The Opponent, a well-known figure in music and fashion, alleged that the Applicant's trade mark applications were filed in bad faith, contrary to section 62A of the *Trade Marks Act 1995* (Cth). The Opponent relied on evidence demonstrating her extensive use of the "VB" mark in relation to fashion apparel, accessories, and cosmetics internationally and in Australia, including a significant cosmetics range launched with Estee Lauder. The Applicant did not file evidence in answer, and the matter proceeded to a decision by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Applicant's decision to adopt and seek registration of trade marks containing the letters "VB" constituted bad faith. This required an assessment of whether the Applicant intended to take advantage of the Opponent's reputation and goodwill associated with the "VB" mark, or otherwise acted unscrupulously, underhandedly, or unconscientiously. The Opponent also contended that the Applicant's website, featuring an image of a slim brunette with long hair, was intended to evoke the Opponent's image.

In reaching its decision, the delegate considered the evidence filed by the Opponent, which detailed her substantial international and Australian use of the "VB" mark in the fashion and cosmetics industries, and her significant public profile. The delegate noted that the onus was on the Opponent to establish bad faith, a high threshold to meet. The delegate found the evidence insufficient to conclude that the Applicant's adoption of the "VB" mark was made with the intention to exploit the Opponent's reputation. Specifically, the delegate was unpersuaded that the use of an attractive female model on the Applicant's website was a deliberate reference to the Opponent, given the Opponent's fame and the common use of such imagery in the cosmetics industry. Consequently, the delegate found that the Opponent had failed to establish the ground of opposition under section 62A.

The delegate ordered that the trade mark applications could proceed to registration, subject to a one-month period from the date of the decision, unless an appeal was filed. The Applicant was awarded costs against the Opponent in respect of one application, and reduced costs in respect of the other, following the general rule that costs follow the event.