Hugo Boss vs Boss Shot: The boundaries of protection of reputed trademarks

AUTHOR: KORSTIAAN GROOT

Last May, the Board of Appeal of the European Union Intellectual Property Office (EUIPO) issued its decision in the case of BOSS vs Boss Shot (R 1221/2019-2). This case gives an interesting insight into the scope of protection of trademarks that enjoy a reputation. It shows that even the broader scope of protection that applies to trademarks with a reputation is not unlimited.

The case revolves around the EU trademark application for “Boss Shot”, filed by the company Boss Shot Ltd. from Bolton, United Kingdom on August 7, 2017. The trademark application was filed for food flavourings in class 30 and electronics cigarettes in class 34. HUGO BOSS Trade Mark Management GmbH & Co. KG (hereafter: “HUGO BOSS TMM”), the company behind the famous fashion brand and the holder of over 400 trademark registrations valid in the EU that include the element “BOSS”, wasn’t too pleased with the trademark application. It therefore filed a notice of opposition against Boss Shot.

First instance

Before EUIPO’s Opposition Division HUGO BOSS TMM argued that its trademarks had acquired considerable reputation in the EU and that the application for Boss Shot was infringing upon its EU trademark “BOSS”, registered for, inter alia, jewellery, clocks and watches (class 14) and clothing, headgear and shoes (class 25). The Opposition Division did not follow HUGO BOSS TMM and concluded that the goods are so different that the public would not associate Boss Shot with (HUGO) BOSS, despite the fact that the trademarks themselves might be considered similar.

Arguments of the parties

HUGO BOSS TMM filed an appeal. First of all, it emphasised that the signs are inherently highly similar due to the complete inclusion of its trademark in the Boss Shot trademark application. Furthermore, according to HUGO TMM, the BOSS trademark enjoys a high degree of reputation in relation to the above mentioned goods in class 14 and class 25, and not merely ‘a certain degree’ as concluded by the Opposition Division. To substantiate this viewpoint, it submitted evidence which included market surveys on the recognition of the trademark BOSS among the public, advertisement expenses and articles in magazines indicating the strength of the BOSS and HUGO BOSS trademark.

Lastly - and this might be a little farfetched - it argued that there is also a degree of similarity between the goods, as it is not unlikely that shops that sell jewellery would also sell electric cigarettes, and that “the overlapping concepts of lifestyle and taste” would create a link in the mind of the public between BOSS and the contested sign.

In contrast, Boss Shot Ltd stated that the goods are not only dissimilar, but neither complementary or in competition with one another. The market for e-cigarettes should be considered far more niche than the overall fashion market. No association would be made by the consumers looking for e-cigarettes, when confronted with a reputed trademark for clothing and jewellery.

Board of Appeal

In its decision, the Board of Appeal firstly sets out the requirements of the extended protection of trademarks with a reputation following article 8(5) of the EU Trademark Regulation:

  • The signs must be identical or similar;
  • The older trademark must have a reputation in the territory concerned and for the goods or services on which the opposition is based;
  • There must be a risk that the contested trademark will take unfair advantage of, or will be detrimental to the reputation or the distinctive character of the older trademark
  • There is no due cause justifying the use of the trademark applied for.

What makes this extended protection so special, is that owners of reputed trademarks may invoke this provision, even if the goods or services of the contested trademark are not similar, contrary to the assessment of infringement regarding “regular” trademarks. However, an element which is not included in the wording of article 8(5), but is developed in case law, is the condition that the relevant public must establish a link between the two trademarks. This link does not necessarily have to lead to confusion, but in the mind of the public an association should be created between the trademarks.

When assessing whether the public will establish a link between the trademarks, one of the factors that should be looked at is the similarity of the goods and services, besides factors such as the level of reputation and the degree of similarity of the signs. The protection of article 8(5) depends on the interplay of these factors: the more the goods differ, the more similar the signs or the stronger the reputation will need to be in order for the public to establish a link between the trademarks. Therefore the question of similarity of the goods and services does in fact play a role for reputed trademarks.

Conclusion

The Board of Appeal stated that it is implausible that the public will think that the manufacturer of a clothing brand will expand to the business of e-cigarettes. It set out that the goods are not only dissimilar, but that the market sectors are not connected in any way and so far apart that the public will not believe that the trademarks are linked.

Based on this decision we may conclude that although the reputed trademarks deserve and enjoy enhanced protection, this protection is not without its limits.

Hugo Boss TMM is known for taking strong action against smaller firms that use the sign BOSS. Earlier this year, as a form of protest, the British comedian Joe Lycett officially changed his name to Hugo Boss, which obviously led to negative publicity for the German fashion brand. It shows us once more how careful one should be with one’s reputation.

Conclusion

The Board of Appeal stated that it is implausible that the public will think that the manufacturer of a clothing brand will expand to the business of e-cigarettes. It set out that the goods are not only dissimilar, but that the market sectors are not connected in any way and so far apart that the public will not believe that the trademarks are linked.

Based on this decision we may conclude that although the reputed trademarks deserve and enjoy enhanced protection, this protection is not without its limits.

Hugo Boss TMM is known for taking strong action against smaller firms that use the sign BOSS. Earlier this year, as a form of protest, the British comedian Joe Lycett officially changed his name to Hugo Boss, which obviously led to negative publicity for the German fashion brand. It shows us once more how careful one should be with one’s reputation.