Last weekend, ‘Hugo Boss’ was trending on Twitter. Not, however, because of a product launch or advertising campaign relating to the luxury fashion brand, but as a result of comedian turned consumer rights advocate Joe Lycett’s announcement that he has legally changed his name by deed poll to Hugo Boss.
Announcing the news on Twitter, he said:
“So @HUGOBOSS (who turnover approx $2.7 billion a year) have sent cease & desist letters to a number of small businesses & charities who use the word ‘BOSS’ or similar, including a small brewery in Swansea costing them thousands in legal fees and rebranding. It’s clear that @HUGOBOSS HATES people using their name. Unfortunately for them this week I legally changed my name by deed poll and I am now officially known as Hugo Boss. All future statements from me are not from Joe Lycett but from Hugo Boss. Enjoy.”
This move is part of the latest investigation by the comedian for his consumer rights series, Joe Lycett’s Got Your Back, due to air later this year. Speaking on Victoria Derbyshire, Lycett/Boss said that the decision to change his name is a result of a number of letters sent by Hugo Boss to smaller businesses in seemingly unrelated industries demanding that they cease and desist from use of the word ‘BOSS’. A brief search of the Trade Marks Register reveals that Hugo Boss owns a string of ‘HUGO BOSS’ and ‘BOSS’ trade marks for a range of clothing, accessories, fragrances, jewellery, bags and retail services (as well as some more unexpected terms including sleighs, IT services and sex aids).
One prominent example of Hugo Boss’s approach to trade mark enforcement is the matter involving Boss Brewing, a craft beer brewery based in Swansea. Following the filing of a UK trade mark application for its ‘BOSS BREWING’ logo (covering beers, ciders and services for providing food and drink), Boss Brewing found itself involved in a David and Goliath-style legal dispute against Hugo Boss, which resulted in the brewery incurring significant costs in defending itself and having to change some aspects of its branding (involving the re-labelling of existing stock, again at considerable expense).
Lycett/Boss said of the above matter, “I think it’s a massive company taking on a little company, and it’s not fair. Nobody’s going to confuse a beer with Hugo Boss. […] I would like [Hugo Boss] to stop doing this, stop sending cease-and-desist letters, because no one’s confusing these two brands”.
Whilst a trade mark registration protects a name or other indicia in respect of particular goods and/or services (e.g. clothing), protection extends further than this, also encompassing goods/services which are deemed to be similar (in relation to clothing, similar goods might be headgear and footwear) and for which there is a likelihood of consumer confusion (meaning that consumers might believe that the goods of one company are in fact those of the other, or that the companies are economically linked).
However, where an earlier trade mark is considered to have a reputation, a likelihood of confusion is not required and the scope of protection granted to that mark is greater, potentially extending as far as goods/services which are dissimilar to those for which the mark is registered. Specifically, the law states that:
“A trade mark which is identical with or similar to an earlier trade mark shall not be registered if the earlier trade mark has a reputation in the United Kingdom and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.”
It is this provision that enables large companies to take action against parties using identical or similar trade marks, even where they are operating in different commercial fields. Indeed, in a recent statement released by Hugo Boss in response to the media storm following the comedian’s revelation, the company has effectively invoked the above provision:
“We welcome the comedian formerly known as Joe Lycett as a member of the Hugo Boss family. As he 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 […]”
However, the statement that the Hugo Boss brands are protected for dissimilar goods across ‘all product categories’ seems a stretch. Even where a trade mark has a reputation, the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (the ‘TRIPS Agreement’, from which national protection for well-known marks stems) establishes that a well-known mark can be enforced against a third party sign only where i) the use of that sign would indicate a connection between the goods and the owner of the well-known mark, and ii) the owner’s interests are likely to be damaged by that use. Such a connection and damage is challenging to establish where the parties operate in completely removed commercial fields.
With this in mind, it will be interesting to see how this matter unfolds. In a further announcement, Lycett/Boss revealed that he is the owner of UK Trade Mark Application No. 3451934 for the mark ‘Boss La Cease en Desiste’. This application entered the two-month opposition period on 27 December 2019. Though this can be extended by a further month on request, to 27 March 2020, it does not currently appear from the data available on the Register that any opposition, nor request to extend the deadline, has been filed.
The trade mark has been applied for in connection with bandages, and the comedian has indicated that he intends to launch a product under his new name. If that product is indeed bandages, then even the international renown of the Hugo Boss brand may not be sufficient to stop such a launch, given that the Hugo Boss company has never traded in medical goods and so consumers would arguably not make the necessary link/connection. No doubt Lycett/Boss will be hoping so, lest he get sued for trade mark infringement. Whilst one of the statutory defences to infringement is that a trade mark registration “is not infringed by the use by an individual of his own name”, this defence is notoriously narrow and only applies provided that the use is “in accordance with honest practices in industrial or commercial matters”. Though this is a relatively undeveloped area of law, it is difficult to see a court being persuaded that changing one’s name by deed poll to that of a famous brand falls within the scope of this defence.
Irrespective of how this matter plays out, it is a timely reminder that in the age of social media and ‘cancel culture’, PR considerations are not to be overlooked when it comes to assessing how and when to enforce your trade mark rights.