Hugo Boss Trade Mark Management v USA Bossert International Development Co Ltd (2014)
The Intellectual Property Office Tribunal has again rejected Hugo Boss’ opposition to registration of USA Bossert’s mark ‘BOSSERT’ on appeal.
The facts of the case were as follows. Bossert applied to register a trade mark using the word “BOSSERT.” Boss opposed this application based on its existing trade mark registrations to argue that Bossert’s mark was similar to its own and was likely to cause confusion to the public. In the first instance, the Tribunal rejected Boss’ opposition finding that there was no likelihood of confusion between the two marks.
Boss appealed this decision in light of the Specsavers v Asda case, maintaining that the Boss Black version of one of its trade marks had distinctiveness in using a ‘Times style serif’ font, similar to that chosen by Bossert. It was further argued that Bossert’s similar font would take unfair advantage of Boss’ distinctive font and repute in the UK.
The Tribunal found issue with the lack of evidence put forward by Boss and therefore rejected its appeal. Boss did not prove that the Boss Black form was the main form for which its earlier marks were used; neither did it show that the form of the word ‘Boss’ had acquired enhanced distinctiveness or reputation. The Tribunal suggested evidence could have been submitted conveying how widely the Boss Black mark had been used.
The case acts as a word of warning to trade mark holders that mere registration of a mark is not enough to establish how widely a mark has been used; neither will it establish a particular uniqueness in a mark. Sufficient evidence is always needed when trying to stop another person’s use of the mark.