Hugo Boss AG v Kei Kun Ho

[2025] ATMO 42

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 number 2392692 (class 28) - HOBBYBOSS - in the name of Kei Kun Ho

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Corrs Chambers Westgarth

Applicant: Not represented

Decision:

2025 ATMO 42

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 58, 60 and 62A – s 60 considered and established – trade mark refused registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Hugo Boss AG (‘Opponent’) to registration of the following trade mark:

   Trade mark number:  2392692 (‘Application’)

   Trade mark:  HOBBYBOSS (‘Trade Mark’)

   Applicant:  Kei Kun Ho (‘Applicant’)

   Filing Date:  28 September 2023 (‘Relevant Date’)

   Specification:               Class 28: Radio controlled model aircraft; Radio controlled model boats; Toy figures; Toy building block sets; Electronic activity toys; Toy aeroplanes; Toy miniature model boats; Scale model kits (toys); Toys; Dolls; Scale model vehicles; Remote controlled scale model vehicles; Radio controlled model cars; Model cars (toys or playthings); Action figures; Radio controlled model helicopters; Craft toys sold in kit form; Model aeroplanes (toys or playthings) having a motor and flown by remote control; Model aeroplanes (toys or playthings); Scale model cars (toys) (‘Applicant’s Goods’)

   [1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

2. The Trade Mark was examined and advertised as accepted for possible registration on 29 February 2024.

3. On 8 March 2024, the Opponent filed a Notice of Intention to Oppose the Application. On 18 March 2024, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 9 April 2024.

4. The Opponent filed Evidence in Support (‘EIS’) on 17 July 2024. The Applicant did not file any evidence.

5. The parties were given the opportunity to request a hearing or for a decision to issue without a hearing. The Applicant requested a decision without a hearing. I make this decision as a delegate of the Registrar of Trade Marks based on the information in the SGP and the EIS.

   Grounds and onus

6. The SGP nominates grounds of opposition under ss 42(b), 44, 60 and 62A.

7. The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   Evidence

8. The Opponent filed the following EIS:

   ·Declaration of Paul Daly, Vice President Finance & Admin CH, dated 15 July 2024 with Annexures PD-1, PD-2, PD-2(1), PD-3 to PD-9, PD-9-1, PD-10 to PD-26 (‘Daly’).

   Summary of EIS

9. According to Daly, the Opponent was established in 1924 and is a well-known luxury fashion house which sells a wide variety of goods and retails these goods including clothing, headwear, footwear, leather goods, accessories, body care products, glasses, watches, jewellery, fragrances, children’s toys, writing instruments, baby products, leather goods and dog apparel and accessories (‘Opponent’s Goods and/or Services’) under the marks BOSS, HUGO BOSS and marks containing BOSS (‘BOSS Trade Marks’).

10. Daly claims there has been use in Australia of the Boss Trade Marks as follows:

    ·Clothing and leather goods since 1979

    ·Fragrances since 2002

    ·Eyewear since 1998

    ·Watches since 2006

    ·Childrenswear since 2010

    ·Children’s toys since about 2020

    ·Dog apparel and accessories since 2022

11. Daly states that the Opponent owns thirty one Australian trade mark applications and registrations (including protecting international trade marks) for its BOSS Trade Marks including registrations for the word mark BOSS (‘BOSS Mark’) in classes 3, 4, 9, 12, 14, 16, 18, 20, 21, 24 to 26, 28 to 35 and 41 to 43. There are seventeen marks in the name of the Opponent relied on by the Opponent in support of the s 44 ground of opposition. These are set out in Annexure A.

12. Daly claims that at the Relevant Date, the Opponent’s Goods were available in 128 countries being sold in around 450 BOSS stores as well as other retail outlets. The Opponent opened its first BOSS store in Australia in 1999 and now has 36 stores which prominently feature the BOSS Trade Marks. In addition, the Opponent’s Goods are sold by various third parties such as David Jones, Myer and Corporate Apparel Group.

13. Daly provides examples of children’s plush toys sold under the BOSS Trade Marks, two of which appear below:

14. Daly provides details of sales of the Opponent’s Goods from 2018-2022 which are immense in the tens of millions of dollars annually.

15. Daly declares that the Opponent’s Goods have been extensively advertised in Australia since at least 2004 by various means including print media such as leading magazines and newspapers, online including on the Opponent’s website at (‘Opponent’s Website’), billboard advertising, in-store promotional events, sponsorships in the sports of golf, sailing, soccer, tennis, motorsports, yachting and polo, social media namely Facebook, Instagram, X, YouTube, TikTok, Pinterest and LinkedIn and via brand ambassadors, influencers and celebrities notably Chris Hemsworth amongst others. Details and examples of these activities are outlined in Daly. Daly also includes the Opponent’s total advertising expenditure in Australia for 2018-2022, which is substantial, and a redacted version of its marketing and PR plan for 2020 and 2021, which is claimed to be representative of the Opponent’s annual marketing plans for Australia. Examples of the Opponent’s advertising campaigns from 2015-2022 are provided.

    Discussion

    Section 60

16. Section 60 provides:

    Trade mark similar to trade mark that has acquired a reputation in Australia

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

    (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, 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.

    Note:For priority date see section 12.

17. To establish this ground, the Opponent must demonstrate the existence of another trade mark(s) which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

    Reputation

18. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[5]

    [5] [2000] FCA 1335, [81].

19. Further, Kenny J stated in McCormick that:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[6]

    [6] Ibid [86].

20. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[7] Here the relevant market is toys and playthings and as such, is likely to include most Australian households. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[8]

    [7] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

    [8] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57] (Lockhart, Gummow and French JJ).

21. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

    The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[9]

    [9] [2019] 142 IPR 275, [83] (O’Bryan J).

22. The SGP claims in summary that the Opponent has acquired a reputation in Australia in the trade mark BOSS and BOSS-formative marks in relation to a very wide range of goods and services including but not limited to clothing, footwear, headgear, accessories, jewellery, watches, fragrances, body care products, leather goods, writing instruments, umbrellas, textile products, technology products, soft toys, toys for animals, clothing for animals and the retailing and wholesaling of such products. As a result, use by the Applicant of the Trade Mark in respect of the Applicant’s Goods in Australia would be likely to deceive or cause confusion.

23. In considering the reputation in the Opponent’s BOSS and BOSS-formative marks, I have focused on the BOSS Mark as it is the most similar to the Trade Mark.

24. I consider that the Opponent has evidenced an impressive reputation in the Boss Mark through extensive sales, significant advertising expenditure and many different forms of advertising and marketing including print media, the Opponent’s Website, billboard advertising, in-store promotional events, sponsorships, social media and via brand ambassadors, influencers and celebrities.

25. I am satisfied that the Opponent has developed a significant reputation in the BOSS Mark before the Relevant Date for the Opponent’s Goods, which goods include children’s toys. I now turn to a consideration of whether as a result of that reputation, use of the Trade Mark is likely to deceive or cause confusion.

    Likely to deceive or cause confusion

26. The concepts of ‘deceived’ and ‘confusion’ were considered in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd wherein Richardson J observed:

    “Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[10]

    [10] [1979] RPC 410, 423 (citation omitted).

27. The likelihood of deception or confusion must be real and tangible.[11] The test for confusion under s 60 is not limited to whether consumers might think that the respective marks are the same. It is sufficient ‘if people would have cause to wonder’ whether the Applicant’s Goods appearing in relation to the Trade Mark were being provided by the Opponent.[12] To this end, it has been observed that ‘the threshold for confusion is not high’[13] and confusion can be established even if it ‘is unlikely to persist up to the point of, and contribute to, inducing sale’.[14]

    [11] Southern Cross (n 5) 595.

    [12] Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd (2016) 122 IPR 232, [76] (Davies J).

    [13] Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).

    [14] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).

28. Here the relevant comparison is between the reputation of the BOSS Mark and a notional normal and fair use of the Trade Mark in respect of each of the Applicant’s Goods.

29. There is no requirement to demonstrate that the trade marks in question are substantially identical or deceptively similar within the meaning of Act. Nevertheless, it has been observed that:

    Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[15]

    [15] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5 (Hearing Officer Lyons), [39] (emphasis in original). See also Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).

30. In summary, here the assessment of the likelihood of deception or confusion is informed by the strength of the reputation of the BOSS Mark, the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods of the parties. Each of these is a variable.

31. With respect to the degree of similarity, I consider the trade mark BOSS to be inherently distinctive and that the word BOSS is an essential element of both the BOSS Mark and the Trade Mark. The other element of the Trade Mark is the word HOBBY. The definition of hobby is very broad namely ‘a spare-time activity or pastime, etc., pursued for pleasure of recreation’.[16] In respect of the Applicant’s Goods the word hobby is apt to describe toys and playthings for a person’s hobby. In my view, consumers are likely to be caused to wonder whether the Applicant’s Goods bearing the Trade Mark are a BOSS range of hobby toys and playthings or are otherwise associated with the Opponent.

    [16] Macquarie Dictionary Online.

32. There is clearly a nexus between some of the Opponent’s Goods as children’s toys overlap directly with the Applicant’s Goods given they are not limited in scope and can fall under the description ‘children’s toys’. Hence, the nature of the Applicant’s Goods would reinforce any mistaken belief that such goods are a brand extension of the Opponent’s toy range or otherwise related to the Opponent.

33. As I am satisfied that there is a real and tangible danger that use of the Trade Mark would be likely to deceive, or cause confusion amongst, a significant or substantial number of relevant consumers, the s 60 ground of opposition has been established.

34. Having found the s 60 ground of opposition established, it is unnecessary that the remaining grounds be considered.

    Decision

35. Section 55 relevantly provides:

    Decision

    (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)  to refuse to register the trade mark; or

    (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:          For limitations see section 6.

36. The Opponent has established on the balance of probabilities the ground of opposition under s 60. I accordingly refuse to register the Trade Mark. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

37. The Opponent has sought costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Anne Makrigiorgos

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    27 February 2025

    Annexure A

Number	Mark	Priority Date	Class	Status
461860	BOSS	18 March 1987	28	Registered
461880	HUGO BOSS	18 March 1987	28	Registered
647109	BOSS (Defensive mark)	30 November 1994	28	Registered
647114	HUGO BOSS (Defensive mark)	30 November 1994	28	Registered
796516	[17]	9 December 1998	9, 25, 35	Registered
889514 (IR 754225)	16 August 2001	9, 14, 18, 24, 25, 28, 34, 35, 42	Protected
901052 (IR 771889)	5 September 2001	9, 14, 16, 18, 24, 25, 28, 34, 35, 42	Protected
902472 (IR 773035)	BOSS	16 August 2001	9, 14, 18, 24, 25, 28, 34	Protected
1215063 (IR 944304)	[18]	4 May 2007	14, 28	Protected
1972525 (IR 1436660)	[19]	22 February 2018	35	Protected
2168856	[20]	26 March 2021	9, 14, 16, 18, 20, 24, 25, 35	Accepted
2168871	[21]	29 March 2021	12, 18, 21, 25, 35	Registered
2168880	29 March 2021	16, 35	Registered
2168888	26 March 2021	16, 18, 25, 35	Registered
2297529 (IR 1680565)	[22]	23 March 2022	18, 20, 21, 28	Protected.
2316621	BOSS (Defensive mark)	22 November 2022	4, 9, 12, 14, 16, 18, 20, 21, 24, 26, 28, 29, 30, 32, 33, 34, 35, 41, 43	Lapsed
2340335 (IR 1717280)	BOSS CAMEL	9 November 2022	9, 14, 18, 25, 35	Protected

[17] Endorsement: The trade mark is limited to the colours RED and BLACK as shown in the representation of the trade mark attached to the application form.

[18] Endorsement: Trade Mark Description: Colour Claimed: ORANGE - Pantone No. 1655 C.

[19] Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied. The applicant has advised that the words in the Mark have no meaning in English.

[20] Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

[21] Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

[22] Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied. The applicant has advised that the words in the Mark have no meaning in English.