Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG
[1999] ATMO 23
•25 March 1999
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Hugo Boss AG to registration of trade mark application 636776 in the name of Jackson International Trading Company Kurt D. Bruhl Gesellschaft m.b.H. & Co. KG
Background
Application 636776 was filed on 3 August 1994 (claiming a priority date of 28 June 1994) by Jackson International Trading Company Kurt D. Bruhl Gesellschaft m.b.H. & Co. KG of Neufeldweg 162, A-8041 Graz, Austria (hereinafter 'Bruhl Austria'). The application seeks registration of the trade mark BOSS! in boldscript for goods in Classes 32 and 33 which are presently enlisted as being:
Class: 32Energy drinks, vitamin and isotonic beverages, non-alcoholic mineral waters, beers
Class: 33Alcoholic beverages (except beers) but excluding liqueur, gin and cognac
On 27 February 1997 the application was advertised as accepted and on 26 May 97 opposition was lodged by Hugo Boss AG of Dieselstrausse 12, D/72555 Metzingen, Germany (hereinafter 'Hugo Boss').
As my decision is reached under section 60 of the Act, I will discuss the evidence, the submissions, and my decision, only as each relates to section 60.
The opponent and applicant, respectively, served their evidence in support and evidence in answer and the issue was heard before me in Canberra on 25 February 1999. Mr Antony Ward of Griffith Hack in Melbourne represented Hugo Boss, the opponent. Ms Carmen Champion, of Spruson & Ferguson in Sydney, represented the applicant - Bruhl Austria.
The evidence
The evidence in support and its reliability were the subject of considerable technical challenge by Ms Champion at the hearing, so it is worthwhile to discuss all of the evidence in some detail inasmuch as it is relevant to my decision.
The evidence in support of the opposition lodged by Hugo Boss consists of statutory declarations (with exhibits) by:
Mr Peter Kanat, operations manager of Hugo Boss Australia Pty
(the 'Kanat declaration')
Gert-Jurgen Frisch, general counsel of Hugo Boss
(the 'Frisch declaration')
Antony John Fowler Ward, registered patent attorney of Griffith Hack in Melbourne
(the 'Ward declaration')
The evidence in answer lodged by Bruhl Austria consists of a statutory declaration (with exhibit) by:
Ms Carmen Champion, solicitor, of Spruson & Ferguson in Sydney
(the 'Champion declaration')
The Kanat declaration
The Kanat declaration attests that Flair Men's Wear Pty Ltd ('Flair') became distributors of fashion clothing from Hugo Boss in August 1988. In July 1989 Hugo Boss and Flair formed Hugo Boss Australia Pty Ltd ('HB Australia') as a joint venture company under their mutual control.
The Kanat declaration goes on to state that HB Australia distributes goods (either made by, or made under licence of, Hugo Boss) which include suits, jackets, tuxedos, sports coats, dress pants, dress shirts, ties, dress vests, socks, belts, slacks, jeans, trousers, top coats, rain coats, denim jackets, sports shirts, sweaters, polo shirts, blouses, sports clothing, sweatshirts, shorts, t-shirts, footwear and similar types of garments. These goods are stated to carry the trade marks HUGO BOSS and BOSS.
The exhibits to the declaration are:
PK-1 - copy of the HB Australia Autumn/Winter mega-catalogue
PK-2 - copy from the 1997 issue of a BMW magazine
PK-3 - copies of HB Australia advertising in -
Vogue Men
Blue
Studio for Men
Australian Style
Max
PK-4 - copies of HB Australia Advertising in -
Golf Digest
Inside Sports
PK-5 - copy of HB Australia advertisement in New Zealand publication Style
PK-6 - copy of HB Australia advertisement in BRW
PK- 7 - copies of HB Australia advertisements in Time Magazine
PK-8 - copies of HB Australia advertisements in -
QANTAS in-flight magazine: The Australian Way
ANSETT in-flight magazine: Panorama
PK-9 - Copies of HB catalogues and pamphets -
Autumn/Winter 1997
Spring/Summer 1997
As far as the dates of the above publications are concerned: when they can be ascertained, they are from 1997. It appears possible that they are all from this period of time when the evidence for the opposition was gathered.
The Kanat declaration also gives sales figures of goods sold in Australia which carry the Hugo Boss trade marks. Without going into specifics, these sales figures start in 1989 at approximately $3 million and grow through to approximately $15 million in 1994 in increments that are quite remarkable.
Also given in this declaration are the figures expended on advertising and promotion in Australia by HB Australia. These start at approximately $0.3 million in 1989, peak at just short of $0.5 million in 1992 and are at approximately $0.4 million in 1994.
The Kanat declaration also states that goods sold under the BOSS and HUGO BOSS trade marks are continuously in business, lifestyle and fashion publication as well as in the national print media. Outdoor billboards, metrolites and television have additionally been used in advertising.
The Kanat declaration states that in addition to the above advertising media, Hugo Boss is a major sponsor of international Formula One motor racing (primarily of the McLaren team), Indy car racing, golf, tennis and soccer (particularly AC Milan). Locally, HB Australia sponsors the Holden Racing Team.
The Frisch declaration
This declaration is made by the General Counsel of Hugo Boss AG. It states that the Opponent is a German company in the business of designing, manufacturing and marketing a wide variety of goods specially designed for men. These goods include those sold under the trade marks "BOSS", "HUGO BOSS" and/or a combination mark "BOSS/HUGO BOSS" (with "HUGO BOSS" represented in smaller lettering below a more prominent representation of the word "BOSS") of which Hugo Boss is the owner.
He then states that his company was founded by Hugo Boss and started as a family firm in Metzingen, near Stuttgart, Germany, more than 70 years ago. In 1948 Hugo Boss Gmbh (limited company) was founded. On 27 June 1984, the company became Hugo Boss AG.
The Frisch declaration then lists the Australian registrations owned by Hugo Boss, (these registrations are the same as those to which the Ward declaration attests and to which Ms Champion refers in her submissions that I will discuss later).
The world-wide sales of goods by Hugo Boss are stated to have risen, from in 1990 when they were about 0.7 billion Deusche Marks (DM) 0.8 billion DM in 1994 and about 1.3 billion in 1997. These figures are the equivalent to about one-tenth higher in Australian dollars - $AUS 0.77 billion, $AUS 0.88 billion and $AUS 1.43 billion.
The Frisch Declaration goes on to give corroborating detail concerning the relationship between it and Flair menswear, and provides details of worldwide advertising and promotional expenditure which are considerable.
The Frisch declaration continues, "[t]hroughout the years, the Opponent continuously expanded and diversified and is still expanding and diversifying from its traditional clothing business into other areas and products. As such, the Opponent's Marks have been applied to a wide variety of goods ranging from perfumes, spectacles, watches, jewellery, luggage and umbrellas. There is now produced and shown to me marked GW-2 a copy of the Opponent's Licence Manual which indicates the variety of goods (both textile and non-textile) to which the opponent's marks are applied."
The License Manual shows the use of the Hugo Boss trade marks on the range of goods mentioned in the Frisch declaration.
The Frisch declaration continues, "[t]he Opponent's Marks are always used extensively as the identifying mark of the Opponent. The Opponent's Marks appear on many items besides clothing including the name signs of the corporate headquarters building, in Metzingen, Germany and all Hugo Boss franchised shops throughout the world, Hugo Boss delivery trucks, corporate letterhead and documentation, business cards, and plates and coffee cups used in the Opponent's cafeteria, its subsidiary companies and also franchised shops in Germany and elsewhere. The Opponent's Marks are also used extensively on sales promotional materials such as umbrellas, golf balls, hats, towels and cups and plates."
The Frish declaration further states, "Mr Kurt D Bruhl owns and controls the Applicant and has controlled and owned Bruhl & Sohne since 22 May 1967. There are now produced and shown to me marked "GJF-5" company searches of both the Applicant and Bruhl & Sohne. The Opponent had no dealings in the past with the Applicant but has had business dealings with the Austrian Company called Bruhl & Sohne. Bruhl & Sohne, a company dealing with clothing, had for at least 14 years between 1981 and 1995 been the Opponent's distributor in Graz, Austria, for the Opponent's products under the "BOSS HUGO BOSS" and "BOSS" trade marks. Due to Mr Kurt D. Bruhl's past dealings with the Opponent, it is absolutely clear that Mr Kurt D Bruhl in the guise of the Applicant has used his knowledge about the Opponent's Marks from his clothing business to launch products in Austria and other countries bearing the mark "BOSS!" and variations thereof.
"The Applicant has used a mark, similar to that applied for in Australia, in Germany using a script which is very similar, if not virtually identical, to that of the Opponent's Marks. There are now produced and shown to me marked "GJF-7" copies of the Applicant's use in Germany of the mark "BOSS!" on energy drinks. The Opponent commenced an action against the Applicant and the Opponent successfully obtained a decision of the District Court of Cologne, Germany, whereby the Applicant is not allowed to use the trade mark "BOSS" or "BOSS!" in Germany in respect of beverages. Such a result means that the Applicant will be obliged to cause the German portion of its International Registration 624036 for "BOSS!" for all registered goods to be cancelled. There are now produced and shown to me marked "GJF-8" a copy of the decision together with an English translation and a copy of the said International Registration. The Applicant's appeal is still pending. If the decision holds then the Opponent would have priority rights in Germany.
"In or about 1995, the Opponent started legal proceedings in Austria against the Applicant, Mr Kurt Bruhl and others who are connected, related, controlled, owned or otherwise managed by either Mr Kurt Bruhl and/or the Applicant for the use of the trade mark "BOSS!" on energy drinks. Due to the deficiencies in the Applicant's products, in particular, the composition, the sale and distribution of the energy drinks has been provisionally discontinued. The Opponent has recently succeeded in an action on appeal against Kurt Bruhl, the Applicant and others in the Supreme Court of the Republic of Austria. By such decision, Mr Kurt Bruhl, the Applicant and others are prohibited with immediate effect from making commercial use of the brand name "BOSS!" for energy drinks. There is now produced and shown to me marked "GJF-9" a copy of the decision mentioned above including a translation in English of the decision.
I will later return to the decisions of the Austrian and German courts.
The Ward Declaration
This declaration details the Hugo Boss trade mark registrations in Australia. Also there is a letter and enclosure from Mr Paul Ryan, Marketing Manager of HB Australia appended to this declaration which details the promotional and sponsorship activities involving the trade marks in Australia.
The Champion Declaration
This declaration attests to circumstances surrounding the filing of an application (73/674099) for registration of a trade mark (HUGO BOSS) in the United States of America by Hugo Boss on 23 July 1987. The application was lodged for a broad range of individually nominated articles of clothing in what the Champion declaration identifies as International Class 14 but which must actually be International Class 25.
The United States Examining Attorney objected on the basis that the trade mark HUGO BOSS so resembled United States registrations 114219, 210819, 570001 and 576398 as to be likely to cause confusion or mistake, or to deceive.
The details of the cited registrations are given in the following table:
| Reg No | Trade Mark | Goods |
| 114219 | BOSS (Stylised) | Gloves and mittens |
| 210819 | BOSS (Stylised in oval) | Gloves and mittens of leather fabric, and a combination of leather and fabric |
| 570011 | BOSS (and Star Design) | Gloves and mittens of leather fabric, and a combination of leather and fabric |
| 576398 | BOSS (Stylised in oval) | Gloves and mittens of fabric, leather, combinations of fabric and leather; safety gloves of fabric, leather and metal to present injury by heavy forces; and fabric, leather or fabric and leather gloves [of (sic)] chemically treated or coated with natural and synthetic rubber, plastics, synthetic resins, and other materials. |
In response to the examiner's report, Hugo Boss's United States attorneys made submission to the USTMO in the following terms:
Applicant respectfully submits that its "HUGO BOSS" mark and the "BOSS" marks owned by the registrant are sufficiently different as to obviate any likelihood of confusion. There are obvious differences in spelling, appearance and pronunciation. Additionally, the Applicant's mark clearly denotes the name of a person. The word "BOSS" as used alone by the registrant, has its own meanings as a term in the English language, including a supervisor, employer or person in authority. It is sometimes also used as a contemporary slang term. Because of such differences prospective purchasers would not likely be confused as between the mark, particularly as they are applied to such different goods.
Following both the submission and an amendment to the specification of goods, which dropped gloves from the claim, the application proceeded to registration.
It is convenient to state now that I do not consider that the representations made to the United States Trade Marks Office referred to in the Champion Declaration are relevant to this matter. It is apparent that, in order to overcome the rejection, the specification of goods was amended. It is not clear whether the grounds for rejection were resolved on this basis alone, or indeed that the amendment formed a basis for part or all of the claims made in the submission. The submission might merely have been a circumlocutory way of stating that the marks were no longer deceptively similar as there was no commonality in the goods.
Remarks on evidence
Before passing on to the submissions made by Mr Ward and Ms Champion, I will make further observations about the evidence.
Taking the evidence as a whole, it is apparent that the trade marks used by Hugo Boss, and its consequent pattern of registrations in Australia, are the result of its world wide marketing strategy. The registrations of its trade marks, when correlated to the history of Hugo Boss, have been concurrent with the start of the use of those trade marks.
While it is true that all of its products are aimed at the high, (or prestige) end of the market, Hugo Boss has identified three areas within this market and devised its trade marks portfolio and marketing strategy accordingly. It is convenient to discuss these by reference to the trade marks.
The 'Hugo mark' This label is aimed towards the fashion/trend area of the mens' clothing market. The clothes and merchandise sold under the trade mark are those that Hugo Boss perceives as being slightly unconventional or avante-garde but stylish. Goods sold under this trade mark account for approximately one twenty-fourth of Hugo Boss's total sales
The Boss/Hugo Boss mark This label is aimed towards the more middle of the road, cosmopolitan, sporting, masculine image. It stresses connections with sports especially motor-racing, golf and tennis. About eight-ninths of Hugo Boss's turnover is generated by goods sold under this mark.
The Baldessarini Mark This label is pitched to a market above the top level of Hugo Boss's core market segment and just below the peak of the luxury brands. The emphasis is on exclusivity and style regardless of cost. Goods sold under this trade mark account for approximately one fortieth of world-wide sales.
BOSS
The Boss Mark This is the trade mark used in Australia prior to the inception of the Boss/Hugo Boss trade mark. It has found some continuing use as a short form for the Boss/Hugo Boss trade mark and as a way of referring to the group of Hugo Boss trade marks.
The evidence also details a continuing relationship between Mr Kurt D Bruhl and Hugo Boss. Mr Kurt D Bruhl is a principal of both Bruhl Austria and a German company called Bruhl & Sohne. During a period of 14 years, from 1981 to 1995, Bruhl & Sohne distributed goods in Graz, Austria, for Hugo Boss. By 1981 Hugo Boss was sponsoring both motor racing and tennis under its trade marks and its trade marks were, at that time, both the BOSS trade mark and the Boss/Hugo Boss trade mark. In August 1994 Mr Kurt D Bruhl registered the trade mark BOSS! for drinks in Austria and the 39 member states of the Madrid Trademarks Convention. Subsequently, discussions took place between Mr Kurt D Bruhl and Hugo Boss without a settlement being reached. That there had been an offer to sell the BOSS! trade mark to Hugo Boss was not negatived by Ms Champion at the hearing and it would seem likely that the offer took place during these discussions.
On 30 September 1995 Mr Kurt D Bruhl launched an energy drink under the trade mark BOSS! at an exhibition in Cologne. Thereafter the energy drink was sold to the public. It would appear from the judgement of the District Court of Cologne that the typeface used by Kurt D Bruhl for the trade mark BOSS! was identical to the typeface used for the BOSS and Boss/Hugo Boss trade marks by Hugo Boss. Photographs were submitted to the District Court of Cologne which showed Kurt D Bruhl's energy drink being presented in direct association with Hugo Boss clothing. The decision of the Austrian Court also refers to the energy drink being presented as a bonus reward for the purchase of clothing and to "… BOSS clothing items and BOSS men's perfume [being] displayed next to stacks of BOSS! energy drink."
The Submissions
Hugo Boss's submissions
Mr Ward started his submissions by drawing my attention to the reputation of Hugo Boss in its Boss trade mark through extensive sales, marketing and promotion in Australia as demonstrated in the evidence in support. He stated that Hugo Boss has promoted its Boss trade mark by sponsorship of sporting events, and that the use of the trade mark has been extended into other goods such as footwear, men's perfumery and watches.
He contended that the reputation of the mark in relation to sporting events such as tennis tournaments is such that the use of the trade mark BOSS! on energy drinks would cause confusion.
Mr Ward drew my attention to decisions such as Intel Corporation v Magnatex International Pty Ltd (1998) 41 IPR 406, at 409, where the tests under section 60 of the Trade Marks Act 1995 had been found to correspond to the tests under section 28(a) of the Trade Marks Act 1955 ('The repealed Act'). In this regard, he reminded me of the test in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97 at 101, and the summary of the tests under section 28(a) of the repealed Act in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1989) 38 IPR 495.
Mr Ward also made submissions concerning the bad faith that he submitted lay behind the application of Bruhl Austria for registration of this trade mark. While these submissions were largely directed at section 59, passing-off and infringement, they are, never-the-less, relevant to my decision under section 60 of the Act.
Bruhl Austria's submissions
Ms Champion opened her submissions with a wide-ranging attack on the probative value of the evidence led by Hugo Boss and HB Australia. She submitted that although the ordinary rules of evidence do not apply in proceedings of this nature, the following rules do apply and I should consider the evidence in the light of these and her criticism of the evidence:
once both parties have been given an opportunity to criticise the evidence by commenting on its probative nature, the hearing officer must then only give it "such weight as its nature deserves": Strata Welding v Charles & Reid (1987) 9 IPR at 541-2;
the statement of an Opponent as to the ultimate fact in issue, for example the question of deception and confusion, is to be given little if any probative value: Jafferjee v Scarlett (1937) 57 CLR 115 at 120-1; Nuts Chocoladefabriek Bv v Cadbury Ltd (1985) 5 IPR 77, Bayer Products Ltd's Appn (1947) 64 RPC 125; and
the question as to when the Opponent first made trade mark use of its mark is one for the hearing officer, and he/she cannot rely on anything but actual evidence, as distinct from assertions that there has been such use: Untell Pty Ltd v Manenti Holdings Pty Ltd (1992) 23 IPR 641.
Ms Champion drew the following alleged deficiencies in the evidence to my attention:
the declarants do not give details of the length of time in their employment and other likely background so that their expertise in the areas to which they are attesting can be estimated.
the evidence concerning the marketing, promotional, sales and other data supplied by both Hugo Boss and HB Australia is unsupported, being mere assertions.
the alleged date of first use of the trade marks in Australia is unsupported and in this regard she drew my attention to the comments of the Hearing Officer in Untell Pty Ltd v Manenti Holdings Pty Ltd (1992) 23 IPR 64-1
Mr Frisch asserts in his declaration that the Opponent distributed fashion goods directly to Australian retailers during the period 1979 to 1988, appointing Flair Menswear Pty Ltd in 1988 as its Australian distributor. No claim is made by Mr Frisch that the fashion goods allegedly distributed by the Opponent to Australian retailers during the period 1979 and 1988 bore either of the trade marks BOSS or HUGO BOSS; this information is therefor irrelevant as it does not address any of the matters in issue in this opposition. Further, no documentary evidence has been adduced to substantiate the two aforementioned claims. Reference is again made to the comments in the Untell decision referred to above.
Ms Champion went on to attack the balance of the evidence that relates to the overseas disputes between the parties, dismissing the bulk of it as irrelevant assertion.
Ms Champion then turned to the issue of section 60 of the Act - that of the reputation of the opponent's mark and whether it was such that her client's use of its mark on the specified goods would be likely to deceive or cause confusion. She referred me, as did Mr Ward earlier, to the test in Smith Hayden, (supra), and also to the tests in : Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1953-1954) 91 CLR at 595 and : Jafferjee v Scarlett (supra).
Ms Champion reminded me that the relevant date as far as the reputation of the Hugo Boss trade marks in Australia is that of the lodgement of the opposed application. If I were to take the Hugo Boss registrations into account, they should be the ones registered before the relevant date.
Ms Champion pointed to possible areas of inconsistency, or of inadequate explanation and unsupported statement, in the declarations in the evidence in support. She claimed these did not allow any conclusion about which trade marks Hugo Boss had used in Australia or when. Or even that the trade marks in question had actually been used in Australia.
Further, she submitted that, should I find that use of the trade marks had occurred in Australia, I should find that such use had been confined to clothing.
Ms Champion then argued that, in terms of section 60 of the Act, there is no reasonable likelihood of deception or confusion if the applicant were to use its trade mark BOSS! in a fair and normal manner in connection with the specified goods for the following reasons:
if the Opponent did enjoy a reputation in the marks HUGO BOSS and BOSS in Australia prior to the Priority Date which, she submitted, is not the case, then such reputation was limited to articles of men's clothing, and further limited to the following combination marks:
it has to be assumed that the probable purchaser will be a person of ordinary intelligence and sense who has an ordinary recollection of the mark, rather than an "ignorant messenger" or specially stupid person.
an objection under Section 28(a) of the repealed Act will have a greater chance of success where the marks in question are used for similar goods or services: Shachihata Industrial Co Ltd v Magic Marker Corp (1984) 3 IPR 519. The goods under consideration are totally dissimilar in that they are different in character, and designed to serve different purposes: Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1953-1954) 91 CLR at 606;
the Bruhl Austria goods are not likely to be thought of as "associated" in some way with the HUGO BOSS articles of men's clothing or BOSS articles of men's clothing, as there is no area of common use such as, for example, between cosmetics and women's clothing, where the area of common use was held to be that cosmetics are used as accessories in the advertising of clothing: Prestige Limited v Potter & Moore Ltd (1939) 9 A.O.JP. 3311;
any actual or probable confusion would proceed from a belief Bruhl Austria has a monopoly of the BOSS mark, which would be an erroneous assumption: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191; 42 ALR 1;
the fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them. What must be considered is the nature and kind of customer who would be likely to buy the goods. Neither customers of men's clothing nor of the specified goods would lack discernment: Dial-an-Angel v Sagitaur Services System, 19 IPR 171 at 185.
Discussion
Probity of the evidence
It is convenient to deal with the criticisms of the probity of the evidence first. Initially, I would observe that I accept Ms Champion's submissions concerning the statements of opinion in the Frisch declaration and have left them out of my summary of the evidence. However, as regards all of the statements concerning the trade marks, dates, sales, advertising, promotional figures and so on, and the German and Austrian Court decisions, I accept them for the following reasons.
Firstly, as Ms Champion submitted, the ordinary rules of evidence do not apply in proceedings of this nature. In general, tribunals of this kind are entitled to act on any material which is logically probative, provided that the rules of natural justice are applied, and both sides have had a fair opportunity to comment upon or contradict any such material. Lord Denning MR in T A Miller Ltd v The Minister For Housing & Local Government (1968) 1 WLR 992, and Deane J in Minister For Immigration & Ethnic Affairs v Pochi (1980) 31 ALR 666.
Secondly, the three main arms of the evidence in support (the Frisch declaration , the Ward declaration and the court decisions) are internally consistent. They corroborate each other and in turn, as I have previously observed, fit with Hugo Boss's pattern of registrations in Australia which thus provide some confirmation of the dates and trade marks.
Thirdly, the supporting material lodged with the declarations such as the list of world-wide registrations of the Hugo Boss trade marks, the Licence Manual, the advertisements in Australian magazines and so on is so extensive that it is more logical to accept that they support the statements of the declarants than to suppose that they might be part of an elaborate sham.
Fourthly, the declarants are making statements as to facts that ought to be within their own knowledge concerning their own organisation's turnover, trade marks, marketing strategies and so on. These statements are supported by exibits and, as there is no conflicting evidence which throws those statements into doubt, these statements should stand.
Lastly, the lack of supporting documentation and lack of statement concerning the length of experience of the declarants complained of by Bruhl Austria as regards the evidence in support is equally true of the evidence in answer.
I will further discuss the evidence when I assess Hugo Boss' reputation later in this decision.
Reasoning
Section 60
This section of the Act allows:
Trade mark similar to trade mark that has acquired a reputation in Australia
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.
Thus, the inter-related topics that arise are:
· whether the trade marks in question are substantially identical or deceptively similar
· the priority date
· the reputation of the Hugo Boss trade marks
· the likelihood of deception or confusion
However, prior to a discussion of these issues, it is appropriate to discuss the operation of section 60.
The principle behind section 60 is new to trade marks legislation in Australia. It grew out of the Recommendations of the Working Party to Review the Trade Marks Legislation in order to conform with Article 18 of the TRIPS Agreement.
By its wording, section 60 is not limited to a consideration of the opponent's goods or services, an assessment of the reputation of the opponent in relation to these goods or services and the comparison of these goods or services with those of the applicant (and the circumstances of trade) in order to gauge whether confusion or deception might ensue. Under section 60, it is not appropriate to limit the inquiry to bald comparisons of the goods or services on the one hand with the goods or services on the other since the opponent's goods or services are not mentioned in section 60: what is specified is the reputation of the trade mark.
Necessarily, the reputation specified in section 60 has grown out of the use of the opponent's trade mark, and that use has been in relation to goods or services. But those goods or services are not the critical or deciding factor - the total circumstances surrounding the reputation of the trade mark in relation to the goods or services of the applicant are what is to be considered and in particular whether because of the reputation of that other trade mark, the use of the applicant's trade mark would be likely to deceive or cause confusion.
The trade marks
The evidence shows that Hugo Boss has at least four trade marks in use in Australia. These are the word BOSS as Hugo Boss appears to have used it prior to 1989 and as is used in the evidence at PK-1 in the expression "… become the BOSS collection's leading cast …", the Boss/Hugo Boss trade mark, the Hugo trade mark and the Baldessarini trade mark, which I detailed under the heading 'evidence'.
Substantial Identity/Deceptive similarity
The tests for substantial identity and deceptive similarity are those stated by Windeyer J in Australian Woollen Mills v F.S. Walton & Co. Ltd (1937) 58 CLR 641 at 658:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106 . Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115 , and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291 , per Jordan C.J. (1944) 44 SR (NSW), at p 298 , where the meaning of the expression was considered.
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106.
In the light of these comments, I consider that the trade mark BOSS! is substantially identical to the trade mark BOSS and is deceptively similar to the trade mark appearing below:
I further consider that the trade mark BOSS! is neither substantially identical nor deceptively similar to the trade marks that I identified as the HUGO trade mark and the BALDESSINI trade mark.
The priority date
This date is that defined by sections 12 and 29 of the Act. The relevant date for this application is therefore that of the section 29 priority claim: 28 June 1994.
Reputation
I think that it is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the 'recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the 'esteem' component of the reputation as do the public events and other trader's marks with which owner of the trade marks in question choses to associate the trade marks via sponsorships, cross-promotions, 'contra deals' and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.
The public perception of how a trade mark is being used, developed and exploited by its owner also constitutes a part of that reputation. An analogy exists with Canon Kabushiki Kaisha v Brook and Anor (1996) 69 FCR 401, where Canon's evidence did not show extensive brand extension, as opposed to Twentieth Century Fox Film Corporation v The South Australian Brewery Co Ltd (1996) 66 FCR 451 (the Duff beer case) where Fox films was able to show that part of its reputation was in intensive brand extension.
The reputation of these trade marks
At the priority date, the reputation of the BOSS trade mark was arguably in some slight decline. But, it had been a major component of the Boss/Hugo Boss for some five years - and it was still being used to refer to the Hugo Boss group of trade marks. The Boss/Hugo Boss trade mark had been in use for some five years and had the benefit of the strong reputation of the BOSS trade mark attaching to it.
I believe that, in this instance, the trade marks in question had both very high sales of goods in respect of which they are used; and, that the trade marks were regarded in high esteem both by their exclusivity and the popular images of prestige action, sporting individuality and success that Hugo Boss had chosen to attach to them. The reputations of the BOSS and Boss/Hugo Boss trade marks were, at the priority date, accordingly very high. The evidence shows that Hugo Boss practiced brand extension and that the public was aware of this.
Prima facie, the evidence shows that Hugo Boss started distributing men's fashion wear direct to Australian retailers in 1979 under the BOSS trade mark. At this stage of Hugo Boss' development, they had been using Italian fabrics for five years to give their goods greater appeal and fashionable finish. In 1980, Hugo Boss' world wide turnover exceeded 100 million DM (approximately $AUS 111 million). In 1981 Hugo Boss extended their sports sponsorship to tennis; and, in 1984, they granted a world-wide cosmetics license to Eurocos. The Boss/Hugo Boss trade mark appears to have been adopted in about 1985 to judge by Australian trade mark registration 442956 and the material lodged in support of the opposition. In 1987 Hugo Boss' world-wide turnover was in excess of 500 million DM. In 1989, Hugo Boss granted a world wide license in eyewear to Carrera. At this time (1989) the Hugo Boss annual turnover in Australia was approximately $AUS 3 million. By 28 June 1994 (the priority date of this application) Hugo Boss's turnover in Australia had risen to approximately $AUS 14 million annually.
A major contributor to the reputation of Hugo Boss comes via their sporting sponsorship arrangements. This results in high exposure of the trade marks in Australia, not only from the trade marks' visibility at sporting events but also in television broadcast of such events both locally and from overseas.
Hugo Boss trade marks appear on the uniforms of racing drivers and on their cars. From my personal observations, the trade marks are seen internationally on the advertising displays on the sideboards of international tennis matches and at international golf fixtures. The trade marks appear in relation to the Holden Racing Team. In total, these trade marks must be seen and recognised by many millions of people via television. The trade marks have been cross-endorsed by the BMW motor car and motor cycle manufacturer. The trade marks have been extensively placed in such magazines with a readership that might relate to the achievements in these sports, and can identify with the brooding models who are pictured wearing Hugo Boss clothing, and are rich enough to afford to buy the goods.
It is not obvious when Hugo Boss first sold watches, cosmetics or eyewear in Australia but I do note that the supporting material lodged as evidence lists Australian distributors of watches and eyewear and that men's perfumery is listed in the 1997 catalogue. While it is not immediately apparent that the trade marks were being used in relation to these goods at the priority date, I am satisfied that the relevant portion of the public knew, at that time of the diversification of the Hugo Boss marketing via brand extension.
I accept, therefore, that the public awareness of the reputation of Hugo Boss is mainly connected with clothing but that the awareness extends to watches, eyewear and perfumery to a limited extent. And that further there is a knowledge that Hugo Boss is in the business of brand extension and the close connection of its trade marks to high visibility, prestige, sports events and personalities.
Although the evidence does not all relate to priority date - 28 June 1994 - I think that (as I do know the Australian and International sales and promotional figures over a considerable period of time) it is logical to extrapolate back from these (and the advertisements lodged in evidence) and conclude that the advertising at the priority date was of a similar nature but on a slightly lower scale and that the Hugo Boss trade marks had a very significant part of its reputation at this date.
Confusion and deception
The applicable principles are those which governed the assessment of confusion and deception under section 28(a) of the Trade Marks Act 1955.
The following summary of the applicable case-law is taken from Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd [1997] 623 FCA (11 July 1997). I note that the decision of Heerey J was overturned but not on these points:
The opponent bears the initial onus of establishing a reputation in its mark sufficient to found an objection
However, once this onus is discharged the burden shifts to the party seeking registration
The rights of the parties are to be determined as at the [priority date]
The onus is on the party seeking registration to satisfy the Court that there is no reasonable possibility of deception or confusion
In order to defeat the application for registration it is not necessary for the opponent to establish that there is an actual probability of deception which will amount to a passing-off. While a mere possibility of confusion is not enough - for there must be a real, tangible danger of it occurring - it is sufficient that the result of the user of the mark will be that a substantial number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough that the ordinary person entertains a reasonable doubt
In considering the issue of deception all the surrounding circumstances must be taken into consideration. The factors to be considered include the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold and the character of the probable purchaser of the goods
A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived
It is not enough for the party seeking registration to negative the likelihood of confusion in relation to the actual trade carried on by the opponent at the [priority date] and to the manner in which the latter then uses his mark. The applicant must also take into account all legitimate uses which the opponent may reasonably make of his mark within the ambit of his registration
The question whether the use of a mark is likely to deceive or cause confusion is in the end a question of impression and common sense; it is a "jury question" in which the judge is entitled to give effect to his or her own opinion as to the likelihood of deception or confusion
I believe, however, when applying these dicta that it should be kept at the very forefront of the mind that what is being considered is the totality of the Hugo Boss trade marks reputation on the one side and the use of the trade mark on goods of Bruhl Austria on the other.
The decisions of the Australian Courts make it quite clear that when considering the reputation of a trade mark on the one hand and the actual or future use by another person of the same trade mark on the other, the element of use in 'bad faith' is a strong factor. Bad faith goes strongly to the questions of substantial identity, deceptive similarity and deception and confusion. I stress that, in stating this, I am not applying law as relates to infringement or passing-off. As it appears that 'bad faith', where it arises, is a necessary element in consideration of the issues under section 60, I can - and indeed must - consider it in relation to that section.
In James Watt Constructions Pty Ltd v Circle-E Pty Ltd [1970] 3 NSWR 481 at 493, the question was whether the defendant had used the Part B mark BARRIER BEAM in good faith as a description of the character or quality of its electronic machine guards. Hope J said (at 493):
“In addition, I am not satisfied that the defendant used the words in good faith. It may well be that the defendant believed that it was entitled to use the words as a trade name or mark, but I have little doubt that the occasion for this use was only the prior use of it by the plaintiff and its parent company and that the defendant was well aware that the words had come to have a secondary signification as denoting the plaintiff’s goods.”
In Australian Woollen Mills Ltd v F S Walton and Co Ltd (1937) 58 CLR 641, in an action involving claims of infringement of a trade mark and passing off, Dixon and McTiernan JJ said at 657:
“But the examination made of the respondent’s motives and good faith seems to us to leave the question of infringement and passing off very much in the same position as it stood in without it. The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency.”
Wilcox and Einfeld referred to this passage in Telmak Teleproducts (Australia) Pty Ltd v Coles Myer Ltd (1989) 15 IPR 362; 89 ALR 48 at IPR 383; ALR 69 where their Honours said:
“As [we] have already observed, proof of the fact that a trader has deliberately copied the name or “get-up” of a rival does not itself establish a contravention of s 52 [of the Trade Practices Act] or a passing off of goods. The proof has evidentiary value only. But the evidentiary value is significant. The courts have long recognised that traders best know their trade.”
There is, in evidence, a copy of the label used on the side of the drink container marketed by Brulh Austria or its directly associated company. The trade mark on the container appears as below and for the purposes of comparison I place the Boss/Hugo Boss trade mark alongside it. I think that it is almost inconceivable that Bruhl Austria could have coined the trade mark without the Hugo Boss trade marks in mind. Bruhl Austria's silence on its reasons for adopting the trade mark while it was still a distributor of Hugo Boss goods, when it could have addressed the issue of bad faith, is
eloquent.
I think that the circumstances of the adoption of the Bruhl Austria trade mark and the very close resemblance between how Bruhl Austria has rendered its trade mark and prior rendering of the BOSS component of the Hugo Boss trade marks, coupled with the past questionable use of the trade mark in a manner which is deceptive and confusing, raise considerable doubt as to the 'good faith' of Bruhl Austria.
I believe that when the relevant tests in Nettlefold, supra, are read in the light of the lack of good faith on the part of Bruhl Austria, it is plain that the use of the trade mark would, because of the reputation of the Hugo Boss trade marks, be likely to confuse or cause deception. In short, I believe that it is appropriate that these tests be 'read down' in order to allow for the apparent behaviour of the applicant.
Further, the quotes in Telmak, Australian Woollen Mills and James Watt, supra, appear to allow that, in the circumstances, I may conclude that some form of confusion and deception will ensue.
Decision
My conclusion is that Hugo Boss has successfully raised prima facie doubts as to the good faith of Bruhl Austria and that, in terms of section 60 of the Act, because of the reputation of the Hugo Boss trade marks, the use of the trade mark BOSS! is likely to confuse or deceive. These doubts have not been successfully addressed or, indeed, addressed at all. In these circumstances it is appropriate to refuse to register the application, subject to any appeal from my decision.
Costs naturally follow the event and go to the opponent in these proceedings.
Ian Thompson
Hearing Officer
25 March 1999
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