Hugo Boss v Hugo Boss: A Trade Mark Stand

— IP Harbour

Comedian Joe Lycett has changed his name to Hugo Boss to highlight their treatment of smaller businesses who trade with the word “Boss”.

BACKGROUND

Joe Lycett is a comedian and host of the television show “ Joe Lycett’s Got Your Back”. On the show, he identifies what he sees as injustices and wrongs done by businesses against consumers and campaigns for redress. It is common for him to perform stunts in his campaign, his latest being to change his name by deed poll to Hugo Boss, to draw attention to the fashion giant’s treatment of a small businesses.

Hugo Boss have registered trademarks for the words “Hugo Boss”, “Boss” and “Boss Black”. To protect their brand, Hugo Boss have issued cease and desist letters to businesses who trade with the word “Boss”. One such businesses was Boss Brewing, a small brewery based in Swansea who brew award-winning beers called Boss Black and Boss Boss. They applied to trademark these names and expected to pay just £300 to do so.

Hugo Boss objected on the grounds that the names would confuse customers into thinking the beers came from them. A dispute ensued and Boss Brewery had to change the beers’ names to “Boss Brewing Black” and “Boss Bossy” and stop selling clothes. They had to pay £10,000 in legal fees and a further £20,000 to relabel bottles and bin clothing stock. They were able to keep their brand name.

THE LAW

Hugo Boss the company issued a statement saying,

“ As [Hugo Boss the comedian] will know, as a ‘well-known’ trademark (as opposed to a ‘regular’ trademark) Hugo Boss enjoys increased protection not only against trademarks for similar goods, but also for dissimilar goods across all product categories for our brands and trademarks Boss and Boss Black and their associated visual appearance.

Following the application by Boss Brewing to register a trademark similar to our ‘well-known’ trademark, we approached them to prevent potential misunderstanding regarding the brands Boss and Boss Black, which were being used to market beer and items of clothing.”

Hugo Boss the company have not registered either mark in relation to alcoholic drinks ( “Hugo Boss” is registered in class 21 in relation to food containers). In any case, section 5 Trade Mark Act 1994 prevents the registration of a mark that is merely similar to an existing mark. The existing mark must be either registered in relation to similar goods or services or have a reputation in the United Kingdom which would be taken advantage of unfairly or suffer harm. It is from under section 5’s large blanket that they make such seemingly tenuous claims as to “increased protection … for dissimilar goods across all product categories”.

Alexandra Nott of Dehns Patent and Trademark Attorneys points out that the Agreement on Trade-Related Aspects of Intellectual Property Rights may undermine this argument. It provides that a “well-known” mark can only be protected as such if using it would indicate a connection between the two brands, and if the original owner’s interests are likely to be damaged. This allows for the counter argument that there is no connection, nor would customers make a connection, between a German luxury fashion house and a small welsh craft beer brewery. Hugo Boss the comedian essentially makes this argument.

PERCEPTIONS

Regardless of the law, this looks terrible for Hugo Boss, who have struggled in the past to distance themselves from their troubled origins. This is what makes their behaviour so surprising.

They say “ As an open-minded company we would like to clarify that we do not oppose the free use of language in any way […] We accept the generic term ‘boss’ and its various and frequent uses in different languages.” The difficulty for them is that the media fuss is not about free speech. It is about the perceived injustice in a company of great wealth and power asserting its rights against a company of little wealth and power, at great cost.

Brand managers and advisors would do well to consider carefully the wider context surrounding a potential breach of IP rights. This is especially the case where there is a huge difference in power between the parties and a key brand aim is rehabilitation in the light of historical abuses of power.

HUGO BOSS’S VIEW OF HUGO BOSS USING HUGO BOSS

Hugo Boss the company say, “ We welcome the comedian formerly known as Joe Lycett as a member of the Hugo Boss family “.

Boss may defend any claim made against him with the “own name” defence. Now limited by the EU trade mark regulation to individual’s names rather than business’ names, it protects Farmer Ronald McDonald’s farm foods shop from claims made by fast-food chain McDonald’s. However, it is limited by the idea of honest practice, which requires that Farmer McDonald does not use his name with the intention of deceiving customers into thinking his shop was an outlet of the fast-food chain.

Tod Davies and Tom Jones of Capital Law think Boss the comedian will not fall foul of this test. They argue that his openness about his intentions and the publicity he has generated will stop customers from confusing the two brands when they buy his products. This seems plausible, although it is possible to be openly dishonest and a court may take the view that changing one’s name to engage in a trade spat with another brand is not an honest practice.

It would also depend on what his products are and how he designs, markets and sells them. It appears he has applied to register the mark “ Boss La Cease en Desiste “ in relation to bandages. By creating a product so far removed from theirs, it seems he is taking care not to infringe on their IP trademarks, perhaps showing he is mindful of the potential difficulty in relying on the own name defence.

Originally published at https://ipharbour.com on March 12, 2020.