George Ross Dolan v Hugo Boss AG

[1997] ATMO 2

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by HUGO BOSS AG to registration of trade mark application number 536403 in the name of GEORGE ROSS DOLAN

Background
As provided for in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

Application number 536403 was lodged, on 19 June 1990, in the name of George Ross Dolan (the applicant).  The application was for registration of the mark, as shown below, for a statement of goods subsequently amended to read, "Belts" in class 25.

The mark was advertised as accepted in Part A of the Register in the Official Journal of 12 November 1992.

Notice of opposition to the mark's registration was lodged, following the granting of an extension of time to do so, on 12 May 1993, by Hugo Boss AG, (the opponent). The notice of opposition listed a great many grounds of opposition but the only ground which was pursued at the hearing was based on s.33(1) of the Trade Marks Act 1955, that the present trade mark was substantially identical or deceptively similar to prior registered trade marks owned by the opponent.

The evidence

The service and lodgment of the evidence in support, answer and reply from the respective parties were completed by 14 November 1994.  The evidence comprised:

Evidence in Support

*Statutory declaration by Antony John Fowler Ward (first Ward declaration) dated 8 November 1993, together with Exhibit AJFW-1

*Statutory declaration by Peter Kanat dated 7 October 1993, together with Exhibits PK-11 to 14

Evidence in Answer

*Statutory declaration by Ian Robert Tannahill dated 12 May 1994, together with Exhibits IRT-1 to 3

*Statutory declaration by George Ross Dolan dated 11 May 1994

*Statutory declaration by John Ray Thomas dated 9 May 1994

*Statutory declaration by Russell Donald Smith dated 10 May 1994

*Statutory declaration by Janice Mary Aitken dated 8 May 1994

Evidence in Reply

*         Statutory declaration by Antony John Fowler Ward (second Ward declaration) dated 14 November 1994, together with Exhibit AJFW-2

In his declaration forming part of the evidence in support, Mr Ward, the patent attorney representing the opponent, exhibited a copy of a statutory declaration by Gunther Strothe, a member of the Board of directors of the opponent, which had formed part of the evidence in support of an opposition in another matter.  In this document, Mr Strothe detailed the history and use of the trade marks BOSS and HUGO BOSS in Australia, including sales and advertising figures in relation to those marks.  Attached as exhibits were examples of the marks in use on posters, newspapers and magazines.  Mr Kanat, Operations Manager of the Australian subsidiary of the opponent, described the history of the use of the opponent’s marks in Australia, business arrangements for their use, and turnover and advertising figures for the opponent’s Australian activities.  He also exhibited copies of examples of use of those marks in advertising.

Mr Tannahill, a patent attorney of Pizzey & Company, whose declaration formed part of the applicant’s evidence in answer, exhibited a swing tag bearing the subject mark, an advertisement bearing the mark and a copy of catalogue references to the mark.  In his declaration, Mr Dolan outlined the history of his adoption and use of the trade mark and gave wholesale figures of the value of goods bearing the mark.  The Thomas, Smith and Aitken declarations were all made by people who knew of Mr Dolan’s goods and who declared as to their knowledge of his mark.  These completed the evidence in answer.

In the second Ward declaration, comprising the opponent’s evidence in reply, he gave the latest sales and advertising figures of the opponent’s goods in Australia, and exhibited a copy of an extract from a catalogue, distributed by the opponent, which referred to belts.

Following a breakdown of negotiations between the parties, the opponent requested a hearing in the matter on 6 November 1996 and it came before me, as a delegate of the Registrar, in Canberra on 18 December 1996.  Mr Tony Ward of Griffith Hack, Patent and Trade Mark Attorneys, appeared by telephone on behalf of the opponent.  The applicant appeared personally at the hearing in order to make his own submissions.

Submissions
Mr Ward, on behalf of the opponent, said that he would only be pursuing the ground of opposition under s.33(1) of the Act at the hearing. He discussed the history of the use of opponent’s HUGO BOSS and BOSS trade marks in Australia, saying that the evidence in support clearly showed extensive use of those marks on a wide range of clothing, including belts. This was particularly so since 1988. He said that the opponent’s marks had a substantial international reputation, supported by extensive advertising in the print and electronic media. Much of this advertising was carried out through sponsorship of, and advertising at, international sporting events. He said that the Australian public would have been exposed to the mark through the televising of these events. The words BOSS and HUGO BOSS were featured prominently in advertising in the Australian market place and turnover under the marks was currently around $12 million per annum.

In relation to the applicant’s evidence in answer, Mr Ward said that there were several deficiencies with respect to refuting claims of deceptive similarity.  He said that the declarants, Thomas, Smith and Aitken, did not appear to have had any knowledge of the opponent’s marks and so were hardly in a position to comment on whether the respective marks were deceptively similar on belts.  He said that those traders did not seem to deal in the sales of clothing, all of them appearing instead to be involved in the sale of saddlery.  He also said that, from the applicant’s evidence, there did not appear to have been any use of the mark prior to 1990.  He said that, despite lodging opposition to the same mark owned by the applicant in class 18, this had been withdrawn when the opponent had assessed that it had no reputation for its marks in that class, despite having a significant standing in this country for clothing.

Mr Ward said that the tests for determining whether marks were deceptively similar were well known.  He referred here to those outlined in the case of Smith Hayden & Co Ltd's Appn (1946) 63 RPC 97 and in Tecmo Kabushiki Kaisha v Tokyo Denki Kabushiki Kaisha, 1995 AIPC 91-177, where these tests were further discussed. He also relied upon the case of Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641 in relation to the comparison of marks to determine deceptive similarity. He said that the doctrine of “imperfect recollection”, as outlined in Rysta Ltd’s App’n (1943) 60 RPC 87, was important in this comparison - particularly in the present case where the word BOSS comprised all of one of the opponent’s marks and was prominent in the applicant’s mark. He maintained that the recollection that purchasers would take away from both marks would be that word.

Mr Ward said that the word BOSS was a distinctive mark and, although it was a surname in this country, it was only recorded 157 times on the Australian electoral roll.  He said that a word, the entirety of one of the opponent’s marks, had been taken by the applicant and used as the first word of its own mark. He submitted that the word BOSS had not lost its identity in the applicant’s mark  He referred for support here to such cases as Radford Chemical Co Pty Ltd’s Appln (1990) 16 IPR 615, and Eau de Cologne v Parfumerie-Fabrik Glockengasse No 4711 Gegenuber Der Pferdepost Von Ferd Mulhens 17 IPR 540. Additionally, it had been judicially recognised that the first word or syllable in a mark was important in determining whether there was deceptive similarity involved - the Tripcastroid case, 42 RPC 264. He did agree that the words BOSS COCKY comprised an Australian colloquialism but this was somewhat negated because that phrase still meant just that - the “boss”, or the person in charge. He said that the cockatoo device was not overly important in considering the similarity of the marks, especially if the goods were ordered over the telephone or over the counter, and that the applicant’s mark would be shortened to simply BOSS when the goods were requested in that manner. He said that belts were not large items requiring a lengthy discerning choice and the applicant’s mark might not be seen in its entirety when in use. Against this was the enormous reputation enjoyed by the opponent’s marks, increasing the possibility of deception and confusion. This was despite the fact that the applicant’s main area of business appeared to be in the country and the opponent’s in city areas. He said that both sides could expand their business activities into the other’s sphere and the notional use of the marks should be considered.

For all these reasons, he said that there was a high likelihood of deception and confusion and that the application must fail.  He submitted that the Registrar should refuse the application and he sought costs in the matter on behalf of the opponent.

In his submissions in reply, Mr Dolan said that the words BOSS COCKY and the cockatoo device were chosen for inclusion in the present mark because of their Australian links and relation to the outback.  He submitted that the cockatoo device was placed prominently at the front of the mark to emphasise the reference to that bird by the words in the mark.  He said that he had applied for the same mark in classes 18 and 25 and despite filing opposition to both of these, the present opponent had finally withdrawn its opposition to the class 18 application - which was now registered - and only proceeded in the present case.  He said that he could not agree that there would be any confusion if the mark was registered in the present case for “belts”, in addition to “saddles, saddle bags, saddlery, horse rugs and swags”, the goods of the class 18 registration.

Mr Dolan said that the traders, whose declarations had formed part of the evidence in answer, all sold clothing in addition to saddlery, a common combination in country areas.  He submitted that they were all well qualified to comment on the lack of any possibility of deception and confusion arising from the two marks.  He said that consumers seeking his belts would all ask for BOSS COCKY belts and not BOSS belts.  The opponent, by its own admission, only sold 750 belts in Australia a year and he submitted that he, in comparison, had a far greater share of the market.  He said that, although it was true that a large proportion of his belts were sold in country areas, he also dealt with city outlets which carried his products.  He said that, despite the large amount of advertising carried out by the opponent, many people living in city areas might not necessarily know of the opponent’s marks - especially in relation to belts.

In relation to the comparison of the two marks, Mr Dolan said that they should be considered on their individual merits.  This, he said, had been done by the Registrar’s delegate during the examination of the present mark.  Despite a citation being initially raised, it had been withdrawn following his representations.  He reiterated that the term BOSS COCKY was an Australian saying known both in the country and the city and this went a long way towards differentiating the marks.  He said that there were no cases of deception and confusion known to him, despite the fact that he sold belts all over the country

Discussion

Section 33 - Substantially identical or deceptively similar

Sub-section 33(1) reads:

Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods, or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

There is no doubt that the goods covered by the opponent’s registrations and the present application are the same.  The opponent has several BOSS and HUGO BOSS registrations in class 25 which include clothing accessories in their specifications of goods, while the applicant’s present application covers only belts.  In considering the question of whether the mark in question is caught by the provisions of s.33, I must therefore determine whether it is substantially identical with, or deceptively similar to, the marks owned by the opponent.

There are distinct differences between the opponent’s and applicant’s marks and despite the fact that the word BOSS is wholly contained in the applicant’s mark, it is obvious that the marks are not substantially identical.  I turn therefore to consider whether the marks can be considered deceptively similar.  Sub-section 6(3) defines a mark as deceptively similar if it is likely to deceive or cause confusion.  Here, the marks should not be placed side by side but consideration should be given to any common impression carried away from the two marks.  As Mr Ward submitted, the test here is as found in the judgment in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, supra, and I refer to the passage where Dixon and McTiernan JJ. said:

In deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.  The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight.

In the present case, there has been no evidence adduced of instances of actual confusion and Mr Ward conceded that he had no evidence of any such events occurring.  I will therefore have to consider the matter from a theoretical viewpoint.

The marks of the parties in dispute are, respectively, the device of a sulphur-crested cockatoo and the words BOSS COCKY, in the case of the applicant; and the words HUGO BOSS and, more notably, BOSS, in the case of the opponent.  The question here is whether the marks, considered as wholes, are deceptively similar.  They do share a common word BOSS but they are different in appearance.  Mr Dolan argued that the words BOSS COCKY were chosen because they comprise an Australian colloquial expression and have, to a degree, an outback connotation.  He said that the cockatoo device highlights this Australian emphasis.  Mr Ward agreed that the words comprised an Australian term but submitted that its meaning is still obvious as being the person in charge.  In this way, he says that deceptive similarity leading to deception and confusion could arise.  I cannot agree with this reasoning.  To my mind, the word BOSS in the opponent’s marks would be seen as a surname.  This is reinforced by the addition of the first name HUGO in some of the marks.  Indeed, as Mr Ward conceded, the word occurs as a surname, albeit less than 200 times, on the electoral roll.  I think that, despite its other meaning and relative rarity as a surname, the word BOSS, in the context of the opponent’s marks, would be seen by the purchasing public as a name in much the same way as are many other quality clothing manufacturers such as Pierre Cardin, Giorgio Armani, or Gianni Versace.  The latter two makers are commonly referred to by their surnames alone.  In contrast, the applicant’s mark would be seen in the way Mr Dolan described - an Australian bush term meaning the person in charge - with the reinforcing element of a cockatoo adding a visual pun.

Therefore, in my opinion, in relation to the tests laid out in the Australian Woollen Mills case, supra, I think that the net impressions left by both trade marks would be sufficiently unalike so as to differentiate them.  The potential buyers of the respective party’s goods would, I believe, take some care in the selection of the belts - especially given that they both appear to be of a high quality and comparatively expensive.  Assuming, therefore, that persons buying such goods would have given the matter some consideration, I think that they would pay a deal of attention to the competing trade marks and the respective goods, and not find them deceptively similar.

Mr Ward was concerned that any telephone orders or counter requests for goods under the respective marks could lead to deception and confusion because of the common word BOSS.  However, I am of the opinion that purchasers of the applicant’s belts would refer to them by the full mark, BOSS COCKY, and not simply BOSS - the latter word lacking the “Australian” feel that is implied in the former term.  On the other hand, purchasers of BOSS belts would expect, I believe, a sophisticated product made by the same company which produces BOSS suits and other clothing.

The opponent’s substantial reputation in this country, with respect to its own marks and for quality items of clothing, particularly suits, is undisputed.  From the evidence, and also from my own observations, the opponent has achieved a high degree of prominence in its particular field.  However, I feel that this reputation is so well established that a member of the public, aware of the HUGO BOSS marks, would not normally expect that the opponent would make BOSS COCKY belts.  Conversely, I feel that those who purchase Mr Dolan’s belts would be equally as sceptical that the maker of those belts was a German suit maker.  As I have already said, I think the two marks are suggestive of different concepts and I think that the public interest will not be harmed by the marks’ coexistence on the Register.

These factors are sufficient, in my opinion, to differentiate the marks.  I therefore feel that there is very little possibility that the relevant purchasers of the goods covered by the present marks would consider those marks to be deceptively similar - even taking into consideration the doctrine of "imperfect recollection".  For the foregoing reasons, I find that the opponent's objection, as it is based on s.33, must fail.

Conclusion
I find that the opponent has failed on the only ground pursued at the hearing.  I therefore dismiss the opposition and, subject to any appeal from this decision, the mark should proceed to registration.  I award costs in the matter of the opposition proceedings to the applicant.

Ian Forno
Hearing Officer

16 January 1997