HUGO BOSS Trad Mark GmbH v Furboss Pty Ltd - [2024] ATMO 14

TRADE MARKS ACT 1995

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

Re:Opposition by HUGO BOSS Trade Mark Management GmbH & Co KG to registration of trade mark application number 2226094 (classes 14, 18, 20, 21, 28 & 31) - FURBOSS - in the name of Furboss Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Megan Evetts of Counsel, instructed by Corrs Chambers Westgarth

Applicant: Sharon Givoni of Sharon Givoni Consulting

Decision:

2024 ATMO 14

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 60 & 62A – s 60 ground of opposition established for classes 14, 18, 20, 21 & 28 – trade mark to proceed to registration in class 31

Background

This is a decision on the opposition by HUGO BOSS Trade Mark Management GmbH & Co KG (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark detailed below in the name of Furboss Pty Ltd (‘Applicant’):
[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Number: 2226094 (‘Application’)

Trade Mark: FURBOSS (‘Trade Mark’)

Filing Date: 5 November 2021 (‘Relevant Date’)

Specification: Class 14: Articles of imitation jewellery; Chains (jewellery); Craft kits for jewellery construction; Fashion jewellery; Hat jewellery; Jewellery charms; Pins (jewellery); Cuff links; Collar studs of precious metals; Tips of precious metals for collars; Jewellery rope chain for anklets; Charms for key rings; Charms for jewellery
Class 18: Articles of clothing for animals; Clothing for pets; Coats for cats; Coats for dogs; Clothing for canine animals; Collars for cats; Collars for dogs; Leads for animals; Leashes for animals; Non-electronic training aids for animals (collars, harnesses, leashes, muzzles)

Class 20: Beds for domestic pets; Beds for household pets; Pet furniture; Pet cushions; Pet carriers (other than bags); Kennels for household pets; Materials for use as beds for domestic pets; Hutches for pets

Class 21: Pet feeding bowls; Containers for pet food; Litter boxes for pets; Litter trays for pets; Plastic containers for dispensing drink to pets; Plastic containers for dispensing food to pets; Brushes for grooming pet animals

Class 28: Toys for pets; Imitation bones being playthings for dogs

Class 31: Pet food; Pelleted pet food; Beverages for pets; Aromatic sand (litter) for pets; Dry processed food for dogs; Dog biscuits; Bones for dogs; Chewing bones for dogs; Canned foods for dogs

After the advertisement of acceptance of the Application for possible registration, the Opponent filed a Notice of Intention to Oppose on 11 April 2022 followed by a Statement of Grounds and Particulars (‘SGP’) on 11 May 2022. The Applicant filed a Notice of Intention to Defend on 20 June 2022.
The parties proceeded to file evidence in accordance with the Regulations. The Opponent’s evidence in support was filed on 20 September 2022. The Applicant filed evidence in answer (‘EIA’) on 23 December 2022. No evidence in reply was filed.
Following the conclusion of the evidence stage, the parties were given the opportunity to request a hearing. Both parties requested an oral hearing. This matter was heard by Sheona Robertson, a delegate of the Registrar of Trade Marks, on 1 December 2023. At the hearing, Megan Evetts of Counsel, instructed by Stephen Stern and Nicholas Mason of Corrs Chambers Westgarth, made oral submissions on behalf of the Opponent. Sharon Givoni of Sharon Givoni Consulting, accompanied by her assisting solicitor Rahul Shah, made oral submissions on behalf of the Applicant. Both parties filed a written summary of their submissions prior to the hearing. After the hearing, this matter was subsequently allocated to me to decide in my capacity as a delegate of the Registrar of Trade Marks. I have decided this matter based upon the video recording of the hearing, the SGP, the evidence filed, the written submissions lodged and oral arguments made on behalf of the parties.

Grounds, Onus and Relevant Date

In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 44, 60 and 62A.
The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The date at which the rights of the parties are to be determined is the Relevant Date. The Relevant Date is also the priority date for the purposes of ss 44 and 60.

Preliminary Matters

At the hearing, the Opponent advised that it was not pressing its opposition with respect to the Applicant’s goods claimed in class 31. Hereinafter, any reference to the Applicant’s Goods is a reference to the goods claimed in the Application in classes 14, 18, 20, 21 and 28 as outlined at [1] above.
The EIA includes two without prejudice letters from the Opponent’s solicitors to the Applicant’s solicitor (‘Without Prejudice Correspondence’). The Opponent argues that the Without Prejudice Correspondence should not be admitted as evidence because it is subject to legal privilege and the contents have no bearing on issues in the opposition. The Applicant asks that the Without Prejudice Correspondence be considered under reg 21.15(4) in relation to any order as to costs. The contents of the Without Prejudice Correspondence are not relevant to these proceedings and any costs awarded are limited by the Regulations. Hence, there is no need to give further consideration to the Without Prejudice Correspondence.

Opponent’s Evidence

The Opponent’s evidence consists of:

Declaration of Paul Daly, Vice President Finance & Admin CH and an authorised representative of the Opponent, made on 19 September 2022 with Annexures PD-1 to PD-21 (‘Daly Declaration’); and
Declaration of Jennifer Louise Wrigley, Special Counsel at Corrs Chambers Westgarth, made on 20 September 2022 with Annexures JLW-1 to JLW-12 (‘Wrigley Declaration’).

According to the Daly Declaration, the Opponent was established in 1924 and is a well-known luxury fashion house which sells a wide variety of goods including clothing, headwear, footwear, leather goods, accessories, glasses, watches, jewellery, fragrances, children’s toys, writing instruments, baby products and textile items such as towels (‘Opponent’s Goods’) under the marks BOSS, HUGO BOSS and marks containing BOSS (‘BOSS Trade Marks’). Mr Daly notes that the Opponent owns numerous Australian trade mark applications and registrations for its BOSS Trade Marks including registrations for BOSS solus (‘BOSS Mark’) in classes 3, 9, 14, 18, 21, 24, 25, 28, 34, 35 and 42. The marks relied on by the Opponent in support of the s 44 ground of opposition are set out in Annexure A.
At the time of the Daly Declaration, the Opponent’s Goods were available in 128 countries being sold in about 450 BOSS stores as well as other retail outlets. The Opponent has used the BOSS Trade Marks in Australia since 1979 for clothing, 1998 for eyewear, 2002 for fragrances, 2006 for watches and 2010 for childrenswear. The Opponent opened its first BOSS store in Australia in 1999 and now has 36 stores which prominently feature the BOSS Trade Marks (‘Australian BOSS Stores’). In addition, the Opponent’s Goods are sold by various third parties such as David Jones, Myer, Corporate Apparel Group and Cavalier Menswear.
In May 2022, the Opponent announced that it would be launching a line of dog apparel and accessories (‘Opponent’s Pet Products’). At the time of the Daly Declaration, the Opponent’s Pet Products were available for sale online and in some of its Australian BOSS Stores.
The Daly Declaration provides details of sales of the Opponent’s Goods from 2017-2021 which are extremely substantial in the tens of millions of dollars annually.
Mr 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’), in-store promotional events, sponsorships, social media and via brand ambassadors, influencers and celebrities. Further details and examples of these activities are outlined in the Daly Declaration. The Daly Declaration also includes the Opponent’s total advertising expenditure in Australia for 2017-2021 and a redacted version of its marketing and PR plan for 2020 and 2021. Examples of the Opponent’s advertising campaigns from 2018-2022 are provided.
The Opponent sponsors various events and engages in collaborations with other brands. As a result, the BOSS Mark is used in conjunction with other brands and words for the Opponent’s Goods. Examples include the Porsche x Boss collection, BOSSOPEN tennis tournament, The Open BOSS golf range, BOSS & NBA collection, BOSS Vitti café and BOSSxJustin Teodoro collection (a collaboration with a New York designer and illustrator).
The Wrigley Declaration outlines the results of online searches conducted to identify high end fashion brands that have extended their range to pet products. The Wrigley Declaration includes examples of pet products offered by luxury brands such as PRADA since November 2020, VALENTINO since December 2020, VERSACE since February 2021, FENDI since April 2021, LOUIS VUITTON since May 2021, HERMES since August 2021 and MOSCHINO since November 202, as well as various other luxury brands after the Relevant Date. In addition, the Wrigley Declaration annexes copies of media articles about the use of high fashion brands in relation to pet products.

Applicant’s Evidence

As EIA, the Applicant filed a Statutory Declaration of Danielle Thompson, sole director of the Applicant, made on 23 December 2022 with Exhibits DT-01 to DT-14 (‘Thompson Declaration’).
The Thompson Declaration outlines the founding of the Applicant in 2020 to design and sell uniquely designed pet products including clothing, furniture and accessories under the Trade Mark. The Trade Mark was adopted as a contrast to the impression imparted by luxury brand names by suggesting the idea of a pet with a smug or cool attitude. Prior to the adoption of the Trade Mark, the Applicant had its lawyers conduct online searches including of the Australian Register of Trade Marks for other similar marks.
Included in the Thompson Declaration is a list of Australian trade mark registrations containing the element BOSS in the name of third parties. The Applicant attests that its lawyers undertook online searches which disclosed that some of these marks and other unregistered marks containing ‘BOSS’ are in use in Australia.
Much of the Thompson Declaration seeks to differentiate the Applicant’s Goods and intended market from the Opponent’s Goods in terms of pricing and trade channels.

Discussion

Section 60

Section 60 provides:

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.

Accordingly, to succeed on this ground of opposition, the Opponent must establish:

a reputation in another trade mark in Australia before the Relevant Date; and
that use of the Trade Mark would be likely to deceive or cause confusion because of the reputation in the other trade mark.

Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[4] It is the reputation in the mark(s) relied upon by the Opponent that must give rise to a likelihood of deception of confusion.[5] A likelihood of confusion exists if there ‘is a real likelihood that some people will wonder or be left in doubt about whether the two sets [of goods] come from the same source’.[6]
[4] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[5] Ibid [81]-[82].
[6] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, [50] (French J).
Reputation cannot be assumed and must be established by the Opponent as a matter of fact.[7] There are a variety of ways the reputation of a trade mark may be established, including by demonstrating that a significant number of people have been exposed to the trade mark,[8] or providing evidence of high volume of sales, advertising expenditure or other forms of promotion of goods or services to which the trade mark applies.[9]
[7] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
[8] Ibid [118].
[9] McCormick (n 4) [86].
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.[10]
[10] [2019] FCA 923, [83] (O’Bryan J).
The reputation relied on by the Opponent must be amongst a significant or substantial number of persons.[11] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[12] In the present case, the relevant market is significant being Australians who purchase pet products.
[11] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).
[12] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
Section 60 does not require that the goods of the Opponent be similar in quality or price to those claimed by the Applicant, nor is there a requirement that the relevant trade marks be substantially identical or deceptively similar. However, where the marks are similar and/or there is a nexus between the goods claimed and those in which the relevant reputation lies, there is more likely to be confusion.
In support of this ground of opposition, the Opponent claims it has a significant reputation in the BOSS Trade Marks for the Opponent’s Goods and, as a result of that reputation, use of the Trade Mark is likely to deceive or cause confusion.
The Applicant acknowledges that the Opponent has ‘achieved a strong or notorious reputation in the Opponent’s Marks’.
In considering the question of whether the Opponent holds the requisite reputation, I have focused on the BOSS Mark as the most similar mark to the Trade Mark. The Opponent has used the BOSS Mark in Australia for many years on a very substantial scale across a broad range of products that extends beyond clothing and fashion accessories to baby products, writing instruments, towels and toys, amongst other goods. The Opponent’s Goods have been extensively promoted through various mediums with millions of people accessing the Opponent’s Website and engaging with its social media accounts. I am satisfied that the Opponent has developed a reputation in the BOSS Mark for the Opponent’s Goods before the Relevant Date and turn now to a consideration of whether as a result of that reputation, use of the Trade Mark is likely to deceive or cause confusion.
In determining whether there is a likelihood of confusion, I am to consider any of the modes of business that would be within the scope of the registration of the Application should it be granted for the Applicant’s Goods.
The Opponent argues that consumers are likely to be caused to wonder whether the Applicant’s Goods offered under the Trade Mark are associated with the Opponent as a result of the Opponent’s extensive use and reputation in the BOSS Trade Marks, the similarity of the marks, its use of BOSS with other words (particularly in collaborations or sponsorships), overlap in some of the goods and tendency for luxury fashion brands to offer pet products.
The Applicant contends that confusion is not likely because of the strength of the Opponent’s reputation in the BOSS Trade Marks and whilst the Applicant acknowledges that high end brands sell pet products, the Applicant submits that consumers would not expect the Opponent to sell such goods under the Trade Mark which is ‘very different’ to the BOSS Trade Marks. The Applicant refers to the decision in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd[13] where the Full Federal Court upheld Justice Perram’s decision that use of ‘Malt Balls’, on a red label in similar script, did not constitute trade mark infringement, passing off or misleading and deceptive conduct despite Mars’ reputation in its MALTESERS mark. The Opponent disputes that this decision is analogous to the present case for a number of reasons including that FURBOSS (unlike ‘malt balls’) is not a descriptive term for the Applicant’s Goods and the Trade Mark includes BOSS as an essential feature. I agree that the MALTESERS decision is not similar to the present case and concur with the Opponent that the situation in Caterpillar Inc v Puma SE[14] is more relevant. In that case, PROCAT was found to be deceptively similar to Caterpillar Inc’s CAT marks and use of PROCAT was likely to deceive or cause confusion in light of the reputation of the CAT marks.
[13] [2009] FCAFC 174; 84 IPR 12 (Emmett, Bennett and Edmonds JJ).
[14] [2021] FCA 1014 (O’Bryan J).
The word BOSS is an essential element of the BOSS Mark and the Trade Mark. People often refer to their pets as ‘fur babies’ and hence the prefix ‘FUR-’ in the Trade Mark is an obvious reference to pet products. The Applicant’s evidence supports this conclusion by noting that a number of trade marks for pet products include the element ‘FUR-’. In my view, consumers are likely to be caused to wonder whether pet products bearing the Trade Mark are a BOSS range of pet products, a collaboration involving the Opponent or otherwise connected to the Opponent. Although the Applicant points to the use of other registered and unregistered marks containing the word BOSS, almost all of the examples either occurred after the Relevant Date, are for goods unrelated to those of the Opponent or the Applicant, are not use as a Trade Mark or are for a logo or other mark that is considerably more different from the BOSS Mark than the Trade Mark.
In terms of the Applicant’s Goods, some of the goods in class 14 overlap directly with the Opponent’s Goods and others are pet products of the sort typically sold by luxury fashion brands. Hence, the nature of the Applicant’s Goods would reinforce any mistaken belief that such goods are a brand extension, collaboration or co-branded products or otherwise related to the Opponent. Although the Applicant argues that its products will not be expensive or high end goods of the sort sold by the Opponent, this is irrelevant as registration of the Trade Mark would permit it to do so. Moreover, different price points do not necessarily dispel consumer confusion. In my experience, fashion labels often have a high end or more expensive brand as well as offering a range at a lower price point.
Given the Opponent’s reputation in the BOSS Mark, similarity of the marks and the goods, I am satisfied that the Applicant’s use of the Trade Mark for the Applicant’s Goods is likely to deceive or cause confusion. The s 60 ground of opposition is established with respect to the Applicant’s Goods.

Decision

The Opponent has established a ground of opposition with respect to the Applicant’s Goods. However, given that the opposition was not pressed with respect to the goods in class 31, I wrote to the Applicant’s lawyers indicating that I intended to refuse the Application unless the Applicant agreed to delete classes 14, 18, 20, 21 and 28.
On 24 January 2024, the Applicant agreed to amend the Application to only cover the goods claimed in class 31. As that amendment has been made, I direct that application 2226094 may proceed to registration in class 31 for the goods claimed not less than one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, 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.
Both parties have sought an award of costs. It is usual for costs to follow the event and as the Opponent has been substantively successful in its opposition, I award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

29 January 2024

ANNEXURE A

Number	Trade Mark	Class	Priority Date
461861	BOSS	18	18 March 1987
461875	BOSS	14	18 March 1987
461860	BOSS	28	18 March 1987
461882	HUGO BOSS	18	18 March 1987
647105	BOSS	14	30 November 1994
647106	BOSS	18	30 November 1994
647109	BOSS	28	30 November 1994
647112	HUGO BOSS	18	30 November 1994
889514	9, 14, 18, 24, 25, 28, 34, 35 & 42	16 August 2001
902472	BOSS	9, 14, 18, 24, 25, 28 & 34	16 August 2001
1248320	BOSS Kidswear	9, 18 & 25	2 November 2007
2168856	9, 14, 16, 18, 20, 24, 25 & 35	26 March 2021
2168871	12, 18, 21, 25 & 35	29 March 2021
2168888	16, 18, 25 & 35	26 March 2021