Hugo Boss AG v Tagmill Pty Ltd

[2000] ATMO 23

TRADE MARKS ACT 1995

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

Re:Opposition by Hugo Boss AG to the registration of trade mark application number 720348 in the name of Tagmill Pty Ltd for the words GIORGIO BOSSI, ITALY and a device in Class 25.

Background

Application number 720348 was filed on 24 October 1996, in the name of Tagmill Pty Ltd (the applicant).  The application was for the registration of the following trade mark:

and covering the statement of goods, "Clothing, excluding footwear and belts" in Class 25.  Subsequent to examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 16 January 1997.

A notice of opposition to the trade mark’s registration was filed by Hugo Boss AG (the opponent), on 14 April 1997.  That notice listed a number of grounds.  However, at the hearing, the opponent only relied upon those grounds under ss. 44 and 60 of the Act.  Accordingly, these grounds are the subject of this decision and the reasons for it.

The opponent requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Canberra.  At the hearing, the opponent was represented by Mr Tony Ward of Griffith Hack.  The applicant's attorney, Mr Malcolm Farr, of Baldwin Shelston Waters provided written submissions prior to the hearing and did not attend in person.

The Evidence
The evidence in support includes a declaration by Antony Ward, a patent attorney of Griffith Hack, the opponent's attorneys.  Attached as exhibits to the declaration are a copy of a declaration by Joerg Muller, a member of the opponent's board of directors, which had been served as evidence in an earlier opposition matter; a list of trade marks registered by the opponent in Australia; a copy of correspondence regarding the opponent's marketing activities in this country; and copies of a business card and a label used by the applicant.

The balance of the evidence in support comprises a declaration by Peter Kanat, the Operations Manager of Hugo Boss Australia Pty Ltd, a joint venture company under the control of the opponent and also Flair Men's Wear Pty Ltd (Flair).  Mr Kanat gives details on Flair's activities in relation to the opponent, its menswear goods, and its trade marks BOSS and HUGO BOSS.  He gives sales figures for goods bearing those marks since 1989, together with the amounts spent on advertising and on various promotions in relation to the marks.  He outlines the advertising methods used in relation to the opponent's goods and its trade marks, especially through association with sports and the arts, and also the opponent's strategic relationships with organisations such as BMW Australia.  Attached as exhibits to his declaration are copies of various advertising catalogues showing use of the opponent's marks, various advertisements featuring the opponent's products and marks, and a video tape featuring the various sports involved in the opponent's sponsorship programmes.

The evidence in answer includes a declaration by Malcolm Farr, a legal practitioner of Baldwin Shelston Waters, the applicant's attorneys, who exhibits a Trade Marks Office database search for the surname BOSSI and the words BOSS- and -OSS.  Next is a declaration by Maximillian Landini, the Managing Director of the applicant, who details the reasons for the choice of the subject mark.  Mr Landini gives details of retail sales and advertising in relation to the mark.  Annexed to his declaration are a series of items featuring the subject mark including some photographs showing the trade mark in use, brochures, a docket, an advertising flier, a business card, an advertising broadside, a carry bag, and an envelope seal.  Then there is another declaration by Mr Farr which includes an exhibit of a swing tag featuring the applicant's mark.  Completing the evidence in answer are declarations by Robert Green, Mario Bartalesi, Barry McBride and Fadi Mikhael who are all involved in the menswear industry and who declare that they would not be confused between the applied for mark and those owned by the opponent.

The evidence in reply includes another declaration by Mr Ward, who refers to his involvement in another opposition related to an application for the registration of the trade mark BOSS! by a third party in classes 32 and 33.  He annexes to his declaration the decision made by the Registrar's delegate in that case, saying that there are some remarks there which are relevant to the present matter.  Completing the evidence in reply is a declaration by Richard Bowman, the co-proprietor and manager of Claude Sebastian Mens Wear, who gives details of his company's involvement with the opponent's goods, and also allegations regarding some of his customers' confusion relating to the applicant's mark and its stores.  He exhibits to his declaration copies of the one of the applicant's labels and a GIORGIO ARMANI label.

Submissions
I will attempt to present here a brief summary of the main points made by both sides during their submissions, only as they relate to the grounds under ss. 44 and 60 which were relied upon by the opponent's attorney at the hearing.

Mr Ward, on behalf of the opponent, listed the various registered trade marks owned by the opponent, saying that the present mark was deceptively similar to them in relation to goods in Class 25.  Additionally, he said that the evidence showed that the opponent had a well established reputation in relation to its BOSS and HUGO BOSS series of marks and that the use of the deceptively similar present mark would lead to deception or confusion.

He outlined the relevant tests, with respect to determining deceptive similarity, as set out by Windeyer J in Shell Co of Australia v Esso Standard Oil (Australia) Ltd, (1961) 109 CLR 407 (the Oil Drop case) emphasising that it was the general impression left by a mark which was the most its most memorable feature.  On this point, he said that such precedent as Australian Woollen Mills Ltd v F. S. Walton & Co Ltd (1937) 58 CLR 641 showed that if a mark is in fact, or from its nature, the source of name or verbal description, then similarities of sound and meaning with other marks is important. He said that, in the present case, the surname BOSSI is the most significant and memorable component of the opposed mark, as is the name BOSS in the opponent's mark. He submitted that it was common in the clothing trade to refer to name marks, such as GIORGIO ARMANI, by the surname only and that this would be the case in the present instance. He said that the surname BOSSI looked similar to the opponent's mark with the addition of an exclamation mark, viz. "BOSS!". He said that a comparison between the marks BOSS and BOSS! had led to a finding of deceptive similarity in Hugo Boss AG v Jackson International Trading Company Kurt D. Bruhl Gesellschaft m.b.H. & Co. KG [1999] ATMO 23 (25 March 1999), unreported, (the BOSS! case).  Thus, he said, the present mark conveyed the same meaning as the opponent's mark because of their similarity and also the getup of the present mark, which emphasised the main feature of the word BOSSI.  He said that I should consider both the opponent's significant reputation in its marks and all of the surrounding circumstances, including how the present mark could be used, if registered.  He said that, in deciding whether deception and confusion would occur, it was enough if the ordinary person entertained a reasonable doubt as to the mark's origin, and that that confusion could exist before the point of purchase - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (the Southern Cross case).

Mr Ward made various submissions in relation to both of the opponent's and applicant's evidence.  He said that while the former evidence established the opponent's reputation for its BOSS and HUGO BOSS marks in Australia, the latter was unclear as to why the present mark was adopted, the declarants' views on the possibility of confusion between the respective marks, or to their allegiances.  He said that, in the applicant's evidence, distorted comparisons were being drawn between the mark HUGO BOSS and the word BOSSI, rather than the true situation of the marks BOSS versus BOSSI - both of which were surnames.

In closing his submissions, he sought costs in the matter on behalf of the opponent.

Mr Farr, in his written submissions on behalf of the applicant said, in relation to the s.44 ground, that the applicant's mark was certainly not substantially identical to any of the opponent's prior registered marks.  He said that the only common elements were the letters B,O,S, and S, the applicant's mark also containing the first name GIORGIO, the word ITALY, and a border device.  He said that, while it could be inferred that one of the opponent's marks was contained within the applicant's mark, such decisions as Tecmo Kabushiki Kaisha v Tokyo Denki Kabushiki Kaisha, 1995 AIPC ¶91-177 - which found the words TEC and TECMO not to be substantially identical - showed that approach to be invalid.

On the opponent's claims that the respective marks were deceptively similar, Mr Farr also referred to the Australian Woollen Mills case, supra, where it was said that the marks should not be looked at side by side but that it was any impression or recollection which was carried away and retained which was important.  He said that the word BOSS had several ordinary dictionary meanings, mainly referring to someone who gave orders, and he submitted that the impression retained of the opponent's BOSS, HUGO BOSS and BOSS/HUGO BOSS marks would be the awareness of the stamp of authority.  This was not the case in the applicant's mark, he submitted.  He said that the respective marks HUGO BOSS and GIORGIO BOSSI did suggest names of people, but the first of these was obviously Germanic and the second clearly Italian.  He submitted that, in the latter mark, the word BOSSI was presented in a distinctive typeface, that it also contained the word ITALY and a device, and that these further served to differentiate the marks.  He pointed to what he said were the circumstances of the trade, where some care is usually taken in the selection of clothing, especially suits.  He also submitted that clothes buyers are used to distinguishing marks comprising or containing a person's name - such as the opponent's marks and others like GIANNI VERSACE and ANTHONY SQUIRES.  All of this, he said, further served to show that the respective marks are not deceptively similar.

Regarding the opponent's evidence which alleged confusion between the marks, Mr Farr said that there must be a real likelihood or probability of confusion - which did not exist here.  He distinguished the present case from that of the BOSS! case, supra, saying that the word BOSSI, as rendered in the mark applied for, did not look like the mark BOSS or BOSS! to the reasonable person.  In any case, he said, the opponent did not use its trade mark in the latter fashion.  He said that the other features - the first name GIORGIO, the geographical name ITALY, the border device and the manner of presentation - further differentiated the marks.  He dismissed the reported cases of confusion in the opponent's evidence as hearsay only, and lacking in credibility and detail.  He contrasted this with the applicant's evidence where declarants, experienced in the trade, said that they would not be confused.

In relation to the s.60 ground, Mr Farr conceded that the opponent's evidence showed that it had a substantial reputation in the trade marks BOSS and HUGO BOSS and their variations, referring to a decision which I made as the delegate of the Registrar - Dolan v Hugo Boss AG (1997) AIPC ¶91-318 (the BOSS COCKY case).  However, he said that it was this strong recognition by the public which meant that the likelihood of genuine confusion with the present mark was decreased.  He said that human nature was such that persons would be more likely to be confused by two similar trade marks if neither of them was well known.  He submitted that the marks here were not even deceptively similar and also that the HUGO BOSS marks enjoyed considerable fame.  This meant that it would be less likely that confusion would occur.

He closed his submissions by seeking costs in the matter on behalf of the applicant.

Analysis
As I have previously stated, in giving the reasons for my decision in this opposition matter, I will only deal with the two grounds of opposition pursued by Mr Ward at the hearing - those involving ss.44 and 60.

Section 44
The relevant part of this section 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.

In relation to this ground, the opponent is relying upon its prior registrations of the trade marks BOSS, HUGO BOSS and BOSS/HUGO BOSS, all in Class 25.  There is no argument that the goods covered by the marks of both parties are the same.  There is also agreement, I think, that the present trade mark is not substantially identical to the opponent's trade marks, there being differences which are readily observed.  What is in contention here is whether the applicant's mark on one hand, and the opponent's prior registered marks on the other, are deceptively similar.  Both attorneys made significant submissions about this topic.  Mr Ward concentrated on a comparison of the present mark with the opponent's mark BOSS and also in the form BOSS!, and Mr Farr contrasted the applicant's mark with all of the opponent's registrations.

I think that the real matter to be considered here is a comparison of the applied for mark with the opponent's mark BOSS, on its own.  I believe that the mark HUGO BOSS, as the full name of a person, is too different to the present mark to be considered as deceptively similar.

The comparison to be made here is not between the marks looked at side by side, but rather between the impression based on recollection of the trade marks that persons of ordinary intelligence and memory would have.  As per the words of Windeyer J, at 415 of the Oil Drop case, supra, as adapted to present circumstances:

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 [use of its mark].

Mr Ward has argued that, because of its prominence, one would carry away a recollection of the word BOSSI from the present mark and that this is deceptively similar to the trade mark BOSS.  Mr Farr has emphasised that the other features in the mark - the forename GIORGIO, the geographical name ITALY and the device - together with the different spelling of the surnames, as being, in total, sufficient to differentiate the marks.  It is true that the surname BOSSI has a prominent position in the applicant's mark and that there is only the letter "I" which differentiates it from the surname BOSS.  However, according to the test outlined by Windeyer J, above, it is persons of "ordinary intelligence and memory" that I must be concerned with here and the impressions which they would get from the use of the subject mark.  I would think that most people seeing the respective marks would infer that BOSSI is an Italian surname - this supposition being emphasised by the Italian forename GIORGIO and the word ITALY.  Equally, the applicant's mark BOSS could be seen as a surname (whether German or not), or the more usual Australian meaning for that word, "a person in charge".  Notwithstanding this, the opponent's BOSS trade mark is, from the evidence and from my own knowledge, extremely well known and is associated with high quality and costly clothing - especially suits.  There is recent precedent, in the words of French J in the case of Registrar of Trade Marks v Woolworths (1999) AIPC ¶91-499, that I can consider such notoriety when considering deceptive similarity in the context of s.44. There he says at 30,700:

His Honour's reference to the familiarity of the name "Woolworths" in Australia was appropriate. Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer's perception of them. For in the end the question of resemblance is about how the mark is perceived. In the instant case the visual impact of the name "Woolworths" cannot be assessed without a recognition of its notorious familiarity to consumers.

Thus, the more well known a mark is, the less likely it is to be confused with a mark which has not been as widely known - especially if there are differences in appearance, pronunciation and spelling as the present marks are.

Further, I should also consider the circumstances which surround the use of the mark.  This approach was endorsed by the High Court in Cooper Engineering Co Pty. Ltd. v. Sigmund Pumps Ltd 86 CLR 536, when citing with approval the judgment of Parker J. in Pianotist Co. Ltd.'s Appn 23 RPC 774. Although I must reflect on the notional use of the present mark on the goods contained in the specification, I think that, in this context, I am permitted to consider the way that clothing is purchased. I think that some care is given to the choice of such goods and that, if someone is intending to buy a suit, for example, some time would be taken in its selection, including its quality, price, size and maker. In my opinion, this attention is paid when buying most clothing and this would further serve to differentiate the respective parties' marks.

Given all of the foregoing, I find that the present trade mark is not deceptively similar to the prior registered marks owned by the opponent.  It follows that the opponent must fail on this ground of its opposition.

Section 60
This section 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.

The opponent's reputation in respect of quality clothing is well established.  As Mr Farr conceded, I have previously found, as the delegate of the Registrar in the BOSS COCKY case, supra, and as was supported by another delegate, Hearing Officer Ian Thompson in the BOSS! case, also supra, that the opponent had a substantial reputation in this country, certainly as at the critical date here, with respect to its trade marks and for its clothing goods - particularly suits.  I am aware, from my own knowledge, which I am permitted to refer to, that the opponent's goods can be placed at the "exclusive" end of the men's clothing market.  The cost of such goods is relatively high when a comparison is made with most of the Australian menswear market.

I have also already found, in relation to the s.44 ground here, that the present mark is not deceptively similar to the opponent's mark BOSS and also the other HUGO BOSS marks.  However, Mr Ward did argue that deception or confusion could occur if the present mark is used because it is deceptively similar to the opponent's mark used in the form BOSS!  This is because the prominent feature of the subject mark is the word BOSSI.  He has submitted that the applicant's mark may be referred to by the surname alone and he has cited examples of other clothing manufacturer's marks where this has happened.  I agree that this is a common practice with respect to fashion clothing marks.  However, there is nothing in the evidence which I can see to show the opponent's mark BOSS used with an exclamation mark.

However, even if it were the case that the opponent had ever used its mark in such a way, there is other material in the present mark than the word BOSSI which would serve to differentiate the marks - especially given the care which I believe a customer would be taking with the purchase of both parties' goods.  One of the main things which should not be lost sight of here is that the opposing goods of apparent interest to both parties - men's suits - are not bags of sweets items - nor indeed bags of fruit.  The opponent's attorney went to great pains at the hearing to emphasise the quality and exclusivity of the opponent's clothing - especially its suits - saying that the opponent's clothing costs are carefully controlled and that it never offers sharply discounted suits, even at sales.  On the other hand, the applicant's clothing, while not as expensive as the opponent's goods are, from the evidence, not what could be considered "cheap", appearing to fall in the medium price range.  I think it would be very unlikely if either sets of goods would be purchased without serious deliberation on behalf of the buyer.  Given this state of affairs, especially the opponent's apparent reputation for its uncompromising attitude on price and quality, I find it difficult to give much weight to the opponent's evidence of reported confusion amongst some of its customers - as described in Mr Bowman's declaration.  Such anecdotal instances are second hand accounts at best and lack the detail which might convince me that true confusion has taken place.  As Kitto J said in the Southern Cross case, supra, at 595, the mere possibility of confusion is not enough - there must be a real and tangible danger of its occurring. It is also accepted law that the risk of deception and confusion must extend to a substantial number of people likely to be concerned in the purchasing of the particular goods or services - Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300. I believe that this is not the case here.

Mr Ward did make some submissions with respect to alleged bad faith on behalf of the applicant in its selection of the present mark.  He said that this was related to the prominence of the word BOSSI in the mark and its alleged similarity to the opponent's mark BOSS.  He also said that the choice of the mark was likely to be an attempt to play on the reputation of two well known clothing labels, namely GIORGIO ARMANI and BOSS.  However, there is nothing at all in the evidence to support these claims.  In his declaration, Mr Landini has said that the reason for the selection of the name GIORGIO BOSSI was to confer an Italian "feel" upon the label.  I find that to be a credible explanation - especially given Mr Landini has an Italian surname himself.

Accordingly, I find that the opposition also fails on this ground.

Conclusion
I have found that the opponent has not succeeded on either of the grounds of opposition relied upon. Accordingly, the opposition fails and I dismiss it.  Subject to any appeal from this decision the application should proceed to registration

Costs
In respect of costs, I can see no reason why they should not follow the result.  Accordingly, I order that the opponent pay the applicant's costs in the matter, in accordance with the Official scale.

Ian Forno
Hearing Officer

17 March 2000