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9th March 2020

Does trade mark law protect brands or create an abusive market?


9th March 2020

Does trade mark law protect brands or create an abusive market?

The Joe Lycett and Hugo Boss trade mark protest

How entertaining to see that Joe Lycett has formally changed his name to Hugo Boss in protest against the company’s robust stance against third parties using their brand name. How effective will his protest be, we wonder?

Hugo Boss have already said that they ‘do not oppose the free use of language in any way’ and that they accept that the term ‘boss’ is generic and used in many different languages. But their ‘cease and desist’ type letters sent to a charity called DarkGirlBoss and to a Welsh company calling their beer ‘Boss Boss’ and ‘Boss Black’ project a bullying corporate stance.

So what right does Hugo Boss have to stop third parties using the ‘boss’ name? The company has a global portfolio of ‘boss’ trade marks. This will enable them to stop third parties from using:

  1. an identical name on identical goods without any further discussion;
  2. an identical name on similar goods OR a similar name on identical/similar goods provided that there is a likelihood of confusion (including a likelihood of association) in the minds of the public.

This means that if we had been acting for the charity or for the Welsh beer company, we would have required Hugo Boss to produce evidence to demonstrate this likelihood of confusion or association. Given that the company’s reputation is primarily in the clothing and fragrance market, we anticipate that they may have struggled. However, it may be that they have a charitable arm to the business that has its own reputation. In any event, we would have argued that all of the ‘offending’ marks above are ‘different marks’ and are not even ‘similar’.

So what if Hugo Boss try and stop the comedian-formerly-known-as-Joe-Lycett from using the Hugo Boss name? Well, he will have a defence under section 11(2)(a) of the Trade Marks Act 1994 because it is now his ‘own name’ and a trade mark owner cannot stop a third party from using his/her own name. However, if the comedian-formerly-known-as-Joe-Lycett started to use his own name in respect of selling clothing, then Hugo Boss might still be able to stop him under the common law right of passing off, where (subject to fulfilling other legal criteria) it is possible to stop a third party from using your reputation in the market place.

It will be interesting to see if Hugo Boss seek to redress the balance by offering stand up comedy shows!

The whole incident draws to mind a similar situation a couple of years ago where a large supermarket took legal action against a local corner shop owner called Mr Singh. He had called his shop ‘Singhsburys’ and had used the colours orange and white in his branding. Having received a cease and desist letter, he renamed his shop ‘Morrisinghs’ and used green and yellow branding. He then received a formal letter from another large supermarket congratulating him for having seen the error of his previous ways and praising him for his wonderful rebrand.

We believe trade marks are valuable assets for a business, but they should be enforced properly and respectfully. They grant a monopoly in respect of the goods/services for which the reputation extends and shouldn’t be used to stop anyone using the name across any market sector, unless such actions are legally valid.

If you have any trade mark queries please contact Laura Trapnell.

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