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

This case concerns an opposition by Hugo Boss A.G. (Hugo Boss) to the registration of trade mark application number 709478, filed by World One Co. Ltd (World One). World One sought to register the trade mark "WOSS" for a range of clothing and footwear in class 25, and games and playthings in class 28. Hugo Boss, a well-established international fashion house, opposed the registration on multiple grounds, citing its own registered trade marks. The opposition was heard by the Registrar of Trade Marks.

The primary legal issues before the Registrar were whether the "WOSS" trade mark was substantially identical with or deceptively similar to Hugo Boss's registered trade marks, pursuant to section 44 of the *Trade Marks Act 1995*, and whether the use of "WOSS" would be likely to deceive or cause confusion due to Hugo Boss's established reputation in Australia, pursuant to section 60 of the Act. Hugo Boss relied on several registered trade marks, including those featuring the word "BOSS", for clothing and accessories.

The Registrar found that while the marks "WOSS" and "BOSS" were not substantially identical, they were deceptively similar. This conclusion was based on an analysis of their visual and phonetic similarities, particularly considering the potential for confusion in spoken contexts, such as noisy shopping environments. The Registrar noted that the phonetic similarity between "W" and "B", coupled with the identical "-oss" ending, could lead ordinary consumers to mistake one for the other. Furthermore, the Registrar found that Hugo Boss had established a significant reputation in Australia for its "BOSS" branded men's clothing and accessories. Consequently, the use of "WOSS" on similar goods was likely to deceive or cause confusion, thereby establishing the grounds for opposition under both sections 44 and 60 of the Act.

Based on these findings, the Registrar directed that the opposition succeed and refused the registration of trade mark number 709478. The Registrar also ordered World One to pay the costs of Hugo Boss.