Hugo Boss created quite a storm with its latest trademark challenge. Apparently the designers, sent a cease-and-desist letter to a multi-award winning Welsh brewery based in Swansea, Boss Brewing,
When a big brand enforces its trademark rights against a small entity, it inevitably risks being branded a bully so situations need to be handled delicately to avoid becoming an example of how not to manage a global brand.
The general public are not aware of the intricacies of trademark law, and often find trademark cases surprising. There is incredulity that an ordinary word like BOSS can be monopolised by anyone. Many people don’t even realise that similar names could infringe on someone else’s trademark rights, so the complexities of trademark law mean that cases in the public eye are painted as unfair where there is a David and Goliath situation.
There are many examples of how trademark protection extends to similar names, and big brands that claim rights over elements of their names. For example, Book, Easy and Mc were the subject of trademark disputes by Facebook, the Easy Group, and McDonalds.
Boss Brewing case
Boss Brewing had secured a trademark registration for its logo having applied to protect its name on 23 October 2018.
The registration covered classes 32, 33, and 43, so the company was “protected” for drinks products it sold, and restaurant services under that name.
Generally, a logo registration primarily protects the visual element rather than the word alone, but it does provide some protection over the name where the name is ownable, and legible, as it is in Boss Brewery’s registration.
From the BBC interview it’s clear that the comedian Joe Lycett (now renamed HUGO BOSS by deed poll in a bid to mock the design company) it sounded as if the design group had objected to the use of BOSS in the name BOSS BREWING, and that did indeed seem ridiculous to me, so I decided to take a look.
However, according to a Law Gazette article, the dispute centred on Boss Brewing’s use of two beer brand names which it had not registered, namely BOSS BLACK and BOSS BOSS.
Details of Hugo Boss’s Challenge
A quick look at the design company’s trademark registrations in the EU and UK reveals a plethora of registrations covering classes 3, 18, 25, and 35. These are essentially the categories for cosmetics, handbags, clothing, and selling through an online estore. The company does have other categories covered but none for beer products.
Anyone looking to check a name before registering their mark would therefore find no existing registrations for beer products and would assume they were on safe grounds to use their chosen name and register it.
However, well-known trademarks have broader protection than other marks. This means that even if a famous brand has no trademark registrations covering a particular category of goods and services, beer in this case, it may be able to successfully challenge use of a name on the grounds that the applicant is seeking to take advantage of its reputation in using a similar name.
It’s always going to be easier for a well-known mark to object to another person’s use of a name the closer the name is to its own, and the more similar the products they’re selling are to what the famous mark is known for.
Even in clear cases where anyone would agree there is clear copying and similarity, Hugo Boss would have needed to prove its reputation in its trademark and to substantiate why the other side could be said to be taking advantage of its reputation.
However, even if Hugo Boss succeeded in demonstrating the reputation of its trademark for clothing and other goods, the question would have arisen as to whether the consumer would make a link between the two trademarks where there is no similarity of products.
As a luxury brand, that is active in several segments, it is not impossible that Hugo Boss could sell beers as well, and if the IP office accepted that, then a link can be made.
Would people automatically think of HUGO BOSS just because the word BOSS appeared in the name of a drink? Here it’s noteworthy that HUGO BOSS uses the brand names BOSS HUGO BOSS, and also BOSS BLACK as is clear from these extracts of its EU trademark registrations.
|Trade mark office||EUIPO – EUIPO|
|Receiving office number||F00687234|
|Receiving office date||2003-10-13|
|(550)Trade mark type||Word|
|(551)Kind of mark||Individual|
|BOSS HUGO BOSS|
|Application reference||A 10440 u|
|Trade mark office||EUIPO – EUIPO|
In essence, as the dispute was about the use of the brewery’s brand names BOSS BOSS and BOSS BLACK, their legal advisers probably realised that the company would do well to settle the dispute and rebrand, rather than put up a fight. So, we will never know how the IP office would have regarded the case.
The issue turned into a huge PR disaster for HUGO BOSS because of the intervention of the comedian, and the story that got around implied that the design group was objecting to the Brewery’s use of the name Boss Brewing and as such, opposing the free use of language in the generic term “boss”.
But it was a PR disaster also due to the way the company has conducted itself in past cases.’
Doing some quick Google research, I noted numerous examples from around the world where the company has indeed been somewhat overzealous in enforcing its trademarks. For example, it unsuccessfully opposed an Israeli company that had applied to register this logo mark TREBOSS in Israel for eyewear, sunglasses and eyeglasses
Then Marks IP reports that Hugo Boss failed in its attempt to stop the registration of “BOSSWASH” in a spread-eagle logo at the Japan Patent Office (JPO).
And in a case involving an application to register Carlo Bossi Hugo Boss failed to stop a cosmetics brand from being registered as an EU trademark.
WTR reported in 2018 that Hugo Boss was accused of ‘bullying’ a charity’s use of the term ‘boss’ DarkGirlBoss.
The founder of that charity made a big fuss about the cease-and-desist letter she had received from Hugo Boss asking her not to use the word ‘boss’ due to concerns around brand confusion.
She stood her ground, arguing that the fashion brand was “ridiculous” for sending such a letter. “They are acting like dictators that are bullying me and stopping the formation of a new movement to empower black woman she said complaining that they have all the power and money in the world.” Her outspoken rejection of the company’s arguments succeeded. She has secured her trademark and has gone on to use the name for her book title and website.
In conclusion it’s clearly important to stand your ground if you have a strong case and to settle if you’re on weaker grounds.
I am not aware of the full facts in this case, but clearly lack of resources to fight when you’re up against a big brand like HUGO BOSS is a big reason to settle unless you have a strong case. In this case the decision to settle was probably because use of BOSS BOSS and BOSS BLACK put the brewery at a disadvantage. They were using BOSS twice, and also combining BOSS with BLACK. It wasn’t just a case of them using the word BOSS therefore.
The take away lesson from this case is that as it’s expensive to change the name of a product, it’s even more important to seek legal advice on your proposed name before proceeding. The advice might cost a few hundred pounds, but you can then look to your legal advisers for compensation if they gave you the go ahead to use a name that proves problematic.