Victoria Beckham’s opposition against another registered “VB” trademark in Taiwan fell short

On March 31, 2018, Victoria Beckham (“Opposer”), the founder of her eponymous fashion brand “VB”, filed trademark opposition against Reg. No. 01888812, alleging that said registration violates Article 30.1.11 and Article 30.1.12 of Trademark Act.

 

The contested trademark, the No. 01888812 trademark (see below), was filed on July 19, 2017, and granted on January 1, 2018, designated for use in hair oil, lotion, toner, perfume, lipstick, nail polish, etc. The Opposer contended that the registration of the contested trademark would cause confusion with the Opposer’s well-known “VB” brand, and that the application of the contested trademark is based on intent to imitate the Opposer’s famous brand.

On December 29, 2021, Taiwan’s IP Office (“TIPO”) did not side with the Opposer, finding that:

1.     To prove violation of Article 30.1.11 of Trademark Act, the Opposer has to show that the alleged trademark has obtained well-known status before the filing date of the contested trademark. While there is evidence showing the use of Opposer’s brand “VB” on cosmetic products (such as “VB x Estee Lauder”) and in magazine’s news coverage (such as VOGUE, ELLE, etc.), the volume and duration of such use is insufficient to prove that prior to the filing date of the contested trademark, Opposer’s “VB” brand has been famous among the general public. 

2.     As to Opposer’s contention regarding violation of Article 30.1.12 of Trademark Act, there must be evidence showing that the application of the contested trademark is made based on intent to imitate the earlier used trademark. Here, TIPO agrees that the contested trademark is similar with the Opposer’s brand “VB” and is applied for use in similar cosmetic product. However, the registrant of the contested trademark argued that she has obtained another registered trademark “Vivian Beauty Spa” (Reg. No. 01718900) in 2015, and that she further registered the contested trademark because she considered “VB” as the combination of initials of “Vivian Beauty”. TIPO finds registrant’s aforesaid explanation reasonable, and thus did not find registrant’s filing of the contested trademark based on intent to imitate Opposer’s brand name.

 

In view of the above, the Opposer’s opposition is denied accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VmQweDNjMWJCY0RETXFVNktzdnJCdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true