06/08/2024
The recent decision in Hugo Boss Trade Mark Management GmbH & Co. KG v Boss Up Pty Ltd [2024] ATMO 129 demonstrates that a graphic device or logo in a trade mark may not be enough to obtain registration where a prominent feature of the mark resembles an existing mark with a reputation in Australia.
Boss Up Applications
Boss Up Pty Ltd filed two trade marks over their logo and the phrase “BOSS UP” (the Boss Up Marks) in respect of a wide breadth of goods and services including cosmetics in class 3, clothing in class 25, water and energy drinks in class 32, alcoholic beverages in class 33 and tobacco products in class 34.
The Boss Up Marks were opposed by well-known German fashion brand Hugo Boss, who own a number of earlier registered logo and word trade marks containing the words “BOSS”. Hugo Boss opposed the Boss Up Marks on a number of grounds, including that the use of the Boss Up Marks may confuse or deceive consumers because there is another similar trade mark with a reputation in Australia, being Hugo Boss’s own trade marks (Section 60 – Trade Marks Act 1995 (Cth)).
Section 60 ground of opposition
To make out the s60 ground of opposition, Hugo Boss had to first establish that they had a reputation in Australia. Secondly, Hugo Boss had to establish that, because of that reputation, if the Boss Up Marks were to be registered there would be a real and tangible danger that consumers would be deceived or confused into thinking the Boss Up Marks were from the same trade source as Hugo Boss—that is, that Hugo Boss is either actually selling the goods and services associated with the Boss Up Marks or that Hugo Boss in some way endorses them.
The Registrar accepted that Hugo Boss’s substantial sales figures in Australia, which were in the hundreds of millions, evidenced that the Hugo Boss marks had acquired a reputation in Australia for goods and services that are the same or similar to those applied for in the Boss Up Marks. The Registrar accepted evidence that Hugo Boss had used their trade marks on a number of promotional materials, including coffee cups and other beverages in the context of pop-up events.
Decision and lessons learned
The Registrar found that the Boss Up Marks had “striking similarities” to the Hugo Boss marks (including the prominent feature of the word “BOSS”) and was satisfied this would cause consumers to at least experience a “reasonable doubt” that the Boss Up Marks may be connected in some way to Hugo Boss. This is despite the fact that the Boss Up logo trade mark featured a prominent graphic element of a lion’s head wearing a crown with the words “BOSS UP” in small font below. While some may view this as a distinctive feature, the Registrar took the view the trade mark would still be pronounced “BOSS UP” with emphasis on the word “BOSS” and therefore there would still be potential for consumers to be confused.
In the end, Hugo Boss was successful and the Registrar refused to register the Boss Up Marks. The key take away message for trade mark applicants is that you cannot rely on unique graphic elements in your trade mark to distinguish your trade mark. If your trade mark contains in any way an existing trade mark that is well known or has a reputation in Australia (where the goods and services are the same or similar) you risk being successfully opposed and refused registration.