Hugo Boss A.G. v World One Co. Ltd

[2000] ATMO 88

TRADE MARKS ACT 1995

DECISION OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Hugo Boss A.G. to registration of trade mark application

709478(25 28) - WOSS - filed in the name of World One Co. Ltd.

Trade mark application number 709478 was filed on 29 May 1996 by World One Co. Ltd, a company duly organised under the laws of Japan (hereafter World One).  The application nominates a wide range of clothing and footwear in class 25, and a wide range of games and playthings in class 28.  The trade mark is the slightly stylised word mark -

709478 proceeded through examination.  There were some minor amendments to the statement of goods and on 5 June 1997, 709478 was advertised as a trade mark that was accepted for registration. 

On 15 August 1997, Hugo Boss A.G., a public company incorporated in Germany, filed opposition to 709478. I shall refer to the opponent as Hugo Boss. It files its opposition under the provisions of Part 5 of the Trade Marks Act 1995, cites eight registered trade marks owned by Hugo Boss and nominates some ten grounds of opposition.

Evidence in support of the opposition followed.  It consists of two declarations, one by Gert-Jürgen Frisch, General Counsel in the employ of Hugo Boss, and one by Stephen Marcus Stern, Legal Practitioner, then in the firm of Freehills Patent Attorneys.  World One responded with evidence in answer comprising a single declaration.  This declaration is by Ikko Kihara, the President of World One.  Hugo Boss then filed two more declarations as evidence in reply.  The first is by Laura Tollfree, a Research Fellow in Linguistics at Monash University.  The second is by Marcus Heinrich Krenzer, another Legal Practitioner employed by Freehills Patent Attorneys. 

On completion of the evidence, Freehills Patent Attorneys, acting on behalf of Hugo Boss, requested that the opposition be set down for hearing, and a hearing was scheduled to take place in Melbourne on  6 June 2000. The hearing was to be conducted before me. Prior to the hearing, Davies Collison Cave, acting on behalf of World One, applied for leave to file and serve further evidence.  On the day of the hearings this application was withdrawn and Davies Collison Cave advised me that the applicant, World One, would not be making any representations.   The opponent, Hugo Boss, however, was represented by Mr Graeme Clarke of Counsel, assisted by Ms Sally Dunstan of Corrs Chambers Westgarth, Lawyers.

Background

The history of Hugo Boss is set out in the Frisch declaration.  While Mr Clarke acknowledges that this declaration is, to some extent, enthusiastically drawn, I take the facts declared largely at face value.

Hugo Boss, says Mr Frisch, is one of the largest fashion houses and clothing manufacturers in the world.  The business was founded in 1923 and till 1948 it concentrated its operation on the manufacture of uniforms and clothing for workers, men and children.  In 1965 the business started to diversify and in 1968 commenced the manufacture and sale of high quality topcoats, trousers and suits for men.  In the 1970s it expanded further to include fashionable jeans, sweat shirts, pullovers, ties, leather clothing, socks and shoes.  It then added fashion accessories and men’s toiletries.  The range is now extensive, and Mr Frisch  gives some time to explain that all goods are designed, or specifically approved, by Hugo Boss before they are allowed to carry the Hugo Boss trade marks.

From 1969 onwards, Hugo Boss began exporting and by 1979 its goods were on the Australian market.  By 1984 they were on the market in Japan.  International trade continued to expand and Hugo Boss now supplies retailers in over 90 countries. 95% of these goods, says Mr Frisch, are prominently marked with a Hugo Boss trade mark. 

Turnover figures are very large. By 1996, the year in which World One filed its application to register , annual worldwide sales accounted for many millions of dollars.  Australian sales were also in the multimillion dollar range and Mr Frisch  declares  (at clause 29):

BOSS Clothing and BOSS Products are among the best known and highest quality of their kind in Australia and are recognised as such by consumers and retailers alike.

Strong but unsupported claims of this kind are frequently expressed by Mr Frisch and no doubt account for Mr Clarke’s reference to the enthusiastic drawing of his declaration.  Nevertheless,  the evidence clearly attests to very extensive use of the Hugo Boss trade marks, to very extensive advertising and to a concentration on high quality and highly priced products.  The objective, says Mr Frisch, (clause 36)

is to create extremely high brand consciousness throughout the world and, in essence, to ensure that the public automatically associates the “HUGO BOSS” and “BOSS” trade marks with high quality clothes and products, good-taste and style.  

Presumably in line with this objective is the evidence that the Hugo Boss trade marks have been prominent in movies and television shows such as Rocky IV, Miami Vice,  Fear No Evil and  Until the End of the World.  Moreover the trade marks are publicised in high-fashion magazines (Vogue, Elle, Harper’s Bazaar, Brides …) and the trade marks have been associated with high profile sporting events (the Davis Cup, US Indy Car Racing, the French Open Tennis Tournament,  the US Masters, various ski championships …).  There has also been an association with impressive cultural venues such as the Guggenheim Museum per the Hugo Boss Prize - an international prize awarded for success in the visual arts. 

All told, I think that Hugo Boss could fairly claim to be well on the way to achieving a good part of its objective.  There has been extensive exposure of its BOSS trade marks through advertising, sales and sponsorship, and  I accept that, nationally as well as internationally, these trade marks will be widely recognised in relation to men’s fashion clothes and men’s fashion accessories —  particularly in respect of high quality clothing and accessories.

There is practically no information at all about the history of the application company World One.  The Kihara declaration is little more than a report that World One has succeeded in registering  the trade mark  in five other countries —  the U.S.A., China, Taiwan, Korea and Japan.   There is no information about the extent of use of the trade mark  in respect of the nominated goods either in Japan or Australia. There is no explanation as to what the word   means or signifies. Nor is there any explanation about how or why this trade mark came to be the subject of this trade mark application.

I turn then to the grounds, and the submission made by Mr Clarke.  Most grounds nominated in the notice of opposition have been abandoned.  The grounds relied on are stated as:

1.        The Opposed Trade Mark:

(a)is substantially identical with, or deceptively similar to, a trade mark registered by the Opponent (including the Opponent’s Trade Marks) and the Opponent’s Trade Marks are for similar goods or closely related services to the goods the subject of the Opposed Trade Mark;  and

(b)has a priority date which is not earlier than the priority date of the Opponent’s Trade marks

2.        The Opposed Trade Mark:

(a)is substantially identical with, or deceptively similar to, a trade mark (including the Opponent’s Trade Marks) which had before the priority date for the registration of the Opposed Trade Mark acquired a reputation in Australia in respect of the goods the subject of the application for the Opposed Trade Mark; and

(b)when used by the Applicant would, because of the said reputation of the trade mark (including the Opponent’s Trade Marks), be likely to deceive or cause confusion.

The first ground relies on the provisions of section 44 of the Trade Marks Act 1995, and the second ground relies on the provisions of section 60.  I shall deal with these grounds in order.

The Section 44 ground

Section 44 (so far as it is relevant) reads:

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or

(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

As mentioned above, in its notice of opposition Hugo Boss lists eight of its registered trade marks. Included in this list are the following six marks.

Number	Trade mark	Class         Goods
345175	BOSS	Class: 25     Clothing of all kinds, including headwear and footwear
442954	BOSS	Class: 25     Clothing, clothing accessories, headgear, footwear, all being goods in Class 25 and all other goods in class 25
442956	BOSS	Class: 25     Clothing, clothing accessories, headgear, footwear, all being goods in Class 25 and all other goods in Class 25
461860	BOSS	Class: 28     Gymnastic and sports articles in this class; games, toys and playthings; all goods in class 28
647108	BOSS	Class: 25     Clothing, clothing accessories in this class, headgear and footwear
647109	BOSS	Class: 28     Gymnastic and sports articles and equipment included in class 28, games, toys and playthings

World One’s trade mark  has an application date and hence a general priority date of 29 May 1996. An earlier convention priority date of 7 March 1996 applies for some clothing items; and a still earlier date of 6 December 1995 applies for some of the games equipment, toys and sporting goods.  All of the opponent’s citations, however, have priority dates of 10 January 1995 or earlier, and therefore pre-date all three of the priority dates claimed by 709478.  The priority date of the application trade mark is thus not earlier than the priority date of any one of these six boss trade marks. Moreover, the goods of the citations all variously overlap either with the class 25 application goods or the class 28 application goods. The issue in respect of the section 44 ground therefore comes down to a comparison of the trade mark  with the trade mark boss and a determination of whether the application trade mark  is either substantially identical or deceptively similar to  the trade mark boss.

Mr Clarke did not argue that  and boss are substantially identical. He did argue for deceptively similarity, however, and referred me to a number of cases, including Australian Woollen Mills Limited v F. S. Walton and Company Limited[1] and the long standing directive on the nature of deceptive similarity in the judgment of Dixon and McTiernan JJ.  In deciding deceptive similarity, their Honours say: 

[1] (1937) 58 CLR 641 at 658

… 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 … for which the protection … 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. … 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. …

The tests for deceptive similarity have recently been revisited by Finn J in 35 C A Henschke & Co v Rosemount Estates Pty Ltd[2].  At paragraph 35 his Honour says:

[2] [1999] FCA 1561 (11 November 1999)

The signposts suggested by the case law … are

(i) when comparing names one must judge them by look and sound:
(ii) one must take account of the way in which the mark is likely to be referred to or heard;
(iii) particular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks … save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them.

First, in terms of the look of the marks,  and boss, Mr Clarke submits, the visual similarity is quite obvious.  He points out that although the application trade mark shows stylised lettering, the lettering is quite plain and both words simply consist of a single letter followed by the letters “oss”.  While this is clearly true, it is also the case that although the two words differ only by one letter, these are short words, and the single letter constitutes 25% of the whole.  There are untold numbers of four letter words which differ only by one letter, and I am not prepared to accept that as a general rule that will result in the words looking alike. In the case of  and boss  I am prepared to accept, however, that the letter combination -oss may be able to claim a slightly higher degree of visual impact than combinations such as -ene,  -ace and -ore.  On the whole I agree that there is a degree of visual similarity, but I doubt that it is sufficient to cause deception or confusion. 

Second, in terms of sound,  Mr Clarke referred me to the Tollfree evidence.  Dr Tollfree lists her qualifications, her research, teaching and consultative experience, and a number of her publications and I accept that, in respect of linguistics, she stands as an expert witness.   She says that the word boss is a phonotactically possible string in English  — in other words, it conforms to the rules of English -  and, she observes, is a word with more than one meaning.  The word woss is also a phonotactically possible string in English.  It does not, she says, currently have any meaning in the English language and in this sense it is described as a possible word.   The orthographic difference between the words boss and woss is the difference between the “W” and the “B”.  These letters, she says, share phonetic characteristics insofar as:

(a)     they are normally voiced (which means that the vocal cords are required to vibrate when the sound is produced)

(b)     they are labial (the lips are involved in the shaping of the sounds) and

(c)     both sounds are referred to as oral,  because when the sounds are produced the velum or soft palate is raised to prevent air from resonating through the nasal cavity.

Other letters which share sound characteristics with “W” and “B” are “M” and “P”, and Dr Tollfree expresses the opinion that Woss, Moss and Poss are more phonetically similar to the word boss than any other possible words of the English language.   I think in speaking the words the similarity is quite apparent, and taking into account the uncontroverted evidence from Dr Tollfree I accept that in terms of sound,  and boss  do sound alike.

The next consideration is the way in which the respective marks are likely to be referred to or be heard.   Dr Tollfree has something to say about this too.  Speaking as an expert in the field of linguistics she proposes a scenario similar to the situation identified by Viscount Maugham in Aristoc, Ld v Rysta, Ld[3] where the purchaser asks for one brand and the shop assistant ministering to that person’s wants[4] knows only, or stocks only, the other brand.  There is nothing in these two marks other than the words  and boss and Dr Tollfree anticipates that, in noisy circumstances, particularly if only part of the word is heard, the listener will typically, though unconsciously, supply an interpretation based on context, and believe that they had heard the word they knew - woss or boss, as the case may be. It is common knowledge that trade marks for clothing operate, in the main, in shopping centres, noisy or otherwise, and taking account of the test set down by Viscount Maugham, and the expressed views of Dr Tollfree, I agree with Mr Clarke that the way in which these marks will be referred to gives rise to the likelihood of confusion or deception. 

[3] 62 RPC 65

[4] ibid at 73 line 4

The last consideration concerns a comparison of the first part or first syllable of the words  and boss. In the main, this test may not be as useful for one syllable word marks as it is for polysyllable  or multi-word marks.   However, although the letters “W” and “B”  look different, Dr Tollfree's evidence is that they sound alike, and as I have already noted, the difference between those letters is the only difference between the two marks.

Returning to the directives of  Justices Dixon and McTiernan,  I think that  and boss  may be sufficiently different to create their own different impressions when the marks are encountered on a visual basis.  The outcome of spoken description, however, seems to be another matter.  Ordinary people, in the circumstances of purchasing clothes, will frequently be conducting those purchases against considerable background noise, and in those circumstances there appears to be a real prospect that boss will be heard for : and conversely will be heard for boss. I am conscious of the fact that Hugo Boss has focused on high cost and high fashion items, but the test in terms of section 44 is not what the trade mark owner has done, but what it may do — the notional use. There is no restriction in respect of any of its class 25 or class 28 registrations which limits the goods to high priced items where shoppers would be expected to exercise caution. In the normal course of business in the way clothing, sporting articles, games and toys are sold, there are many situations where items are bought with very little forethought or caution. The habits of ordinary people, in conducting purchases in such a setting, are relevant and in that context, I conclude that spoken use of the trade mark  in relation to the application goods is, in respect of the trade mark  boss, likely to lead to confusion. 

I therefore find that the application trade mark is deceptively similar to the Hugo Boss trade marks registrations numbers 345175, 442954, 442956, 461860, 647108 and 647109, and that the section 44 ground relied on by Hugo Boss has been made out.

The section 60 ground

Section 60 of the Act reads:

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

In terms of paragraph 60(a) Hugo Boss is required to show that it has an established Australian reputation in a trade mark which is substantially identical or deceptively similar to the application trade mark.   I have found that  is deceptively similar to the opponent’s boss trade marks, in particular to six of its registrations in classes 25 and 28.  I have also concluded from the Frisch evidence that there has been extensive exposure of the boss  trade marks through advertising, sales and sponsorship.  And I have accepted that nationally these trade marks will be widely recognised in relation to fashion clothes and fashion accessories.  In particular, I have found that this reputation exists in respect of high quality men’s clothing and men’s fashion accessories.  

These findings establish the opponent’s ground so far as the threshold test of paragraph 60(a) is concerned.

Paragraph (b) requires a consideration of whether, as a consequence of the reputation established in the boss trade marks, use of the trade mark  would be likely to deceive or cause confusion.  Here, as a first step, I need to consider the nature of the opponent’s reputation.   To this end I turn to the  mass of material exhibited in the Frisch declaration. It includes point of sale material and videos of fashion shows, RH- 4; representative samples of the world-wide advertising and promotion for boss clothing and boss products, RH-6;   journal articles about boss products,  RH-7;  evidence of use of boss  in relation to sports sponsorship and sporting events, RH-9,   RH-10 and   RH-11; newspaper reports of the use of boss products in various television and cinema features, RH-12.  This material shows prominent and consistent use of the trade mark boss —  and in the main, I think it is fair to say that where it is used,  it is conspicuously displayed.  Frequently it is used in association with the word hugo boss shown in smaller letters and as a subsidiary element. It is clearly, however,  the word boss, boldly rendered,  which catches the attention, and fixes in the mind.  I note that a deal of this material is after the relevant date (May 1996 - the date on which  was filed) but on the whole, I accept that the reputation established in the trade mark boss by the opponent, Hugo Boss, in respect of men’s clothing is very considerable.  This reputation does, however, appear to attach to an expensive line of men’s clothing.

In response to discussion at the hearing as to the scope of this reputation in terms of the broad nature of the application goods my attention has been drawn to a scattering of items in the evidence showing the trade mark boss employed in respect of games and playthings; and gymnastic and sporting articles.  The Frisch declaration specifies that Hugo Boss advertises in sporting magazines, and nominates Golf, Golf World and Tennis International.  There is no indication, however, that this advertising comprised anything other that the promotion of men’s clothing.  It is true that Hugo Boss has been seriously involved in sporting sponsorship and in the promotion of sporting events, but it requires something more than that to show that reputation in the trade mark boss actually exists in respect of gymnastics, sports and games equipment.

Given the nature of this reputation the next step is to determine whether, in respect of the application goods, which, for class 25 read:

Clothing, footwear and headgear including collar protectors, overcoats, girdles, outer clothing, underclothing, coats,  shirts, jumpers, shawls, suits, skirts, scarfs, sweaters,  neckties, pyjamas, breeches, pants, brassieres, underwear,  vests, suspender[s], stockings, spats, top hats, berets, caps,  hats, garters, socks, sock suspenders, trousers, drawers (clothing), underpants, braces, belts, shoes, sandals,  heels, tights, boots, sports jerseys, bathing suits, sports  shoes, boots for sports, ski boots, special sporting and  gymnastic wear, special sporting and gymnastic footwear

and for class 28 read:

Games and playthings; gymnastic and sporting articles not included in other classes including archery implements, ice skates, stationary exercise bicycles, exercisers (expanders), tables for indoor football, toys, toys for domestic pets, billiard cues, skittles (games), cricket bags, gloves for games, boxing gloves, baseball gloves, fencing gauntlets, golf clubs, golf bags, golf gloves, surf skis, surfboards, dice, water skis, skis, wax for skis, skating boots with skates attached, skateboards, sleighs (sports articles), cups for dice, tables for table tennis, chess games, checkers (games), fishing tackle, conjuring apparatus, dominos, dolls, billiard tables, billiard balls, swimming pools (sports or play articles), fencing weapons, bowling apparatus and machinery, balls for games, playing balls, body-building apparatus, rackets, roller skates, quoits, golf equipment, game equipment, Japanese chess sets, mahjong goods, backgammon, diamond games, fishing equipment

use of application trade mark  would be likely to deceive or cause confusion.

In considering the nature of the reputation in the trade mark boss it is relevant to mention the Krenzer declaration.  This was filed as part of the evidence in reply and is a description of a survey carried out on the instruction of Hugo Boss with the intention, as I understand it, of demonstrating the force of reputation in the trade mark boss.  The survey was arranged by the opponent’s then agent, Freehills Patent Attorneys, and Mr Krenzer had oversight of the exercise.  In brief, two undergraduate law students were instructed to survey people in the central business district of Melbourne on 12 and 19 August 1999.  The strategy involved showing the interviewee a card with the word   on it, and seeking answers to a series of questions, the first of which was:

If you saw a man’s suit with a label having this brand on it [shows flip card with  on it] would you think that the suit had any connection with any other brand(s) that you know?

Where this resulted in a positive answer this question was followed by a number of others apparently constructed with the intention of revealing  the identity of the other brands and the goods for which the other brands were known.   The results, broadly, showed a significant number of people were put in mind of the boss  trade mark (some 29% of the 192 persons surveyed).  However, there are a number of reasons why I think this survey cannot count.  The first point is that the introductory (and leading) question focuses the respondent’s attention on men’s suits, and this is very far from an encompassing description of the goods sought in registration.  The second point is that there is no indication as to where in the central business district these interviews were conducted and I am aware that interviews that were conducted in the vicinity of advertising material, or store window featuring the boss trade mark, would necessarily be biased. The third point is that the interview, if it shows a pattern of recognition, does so in August 1999.  Reputation for section 60 purposes, however, is reputation at the date of filing — May 1996.  This last fact overrides other criticisms and dictates that no weight can be attached to the Mr Krenzer’s evidence.

My overall finding in respect of the section 60 ground is that Hugo Boss has a significant reputation in respect of men’s clothes and accessories and, because of that reputation, use of the trade mark in respect of those goods, would be likely to deceive or cause confusion. In terms of the section 60 ground, had there been no issue in respect of section 44, I would therefore have been prepared to allow this application for the class 28 claim, and for a restricted range of class 25 goods.

Decision

Hugo Boss has fully established its opposition so far as the section 44 ground is concerned. It has partially established its opposition in respect of its section 60 ground. In the circumstances I direct that the opposition succeeds and I refuse registration of trade mark number 709478.

Costs

Mr Clarke sought costs, and I see no reason why, in the circumstances, costs should not follow the event.  I therefore order the applicant, World One, to pay the costs of the opponent, Hugo Boss, in the amounts provided for in the regulations.  On application the amount of costs will be taxed, allowed and certified by a trade marks officer appointed by the Registrar for that purpose. 

Helen R Hardie
Deputy Registrar

14  August 2000