Hugo Boss Trade Mark Management GmbH & Co. KG v Boss Up Pty Ltd

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 numbers 2256997 – BOSS UP - and 2257215 – BOSS UP and graphic device - in the name of Boss Up Pty Ltd.

Delegate: Bianca Irgang

Representation:
Opponent: M Evetts of Counsel instructed by Corrs Chambers Westgarth

Applicant: Not represented

Decision: 2024 ATMO 129
Trade Marks Act 1995 (Cth) - Section 52 opposition: sections 42(b), 44, 60 and 62A pressed at hearing – section 60 established for all goods.
Background

Boss Up Pty Ltd (‘the applicant’), filed trade mark application numbers 2256997 and 2257215 on 18 March 2022 in classes 3, 25, 32, 33 and 34 of the Nice Agreement Concerning the International Classification of Goods and Services. Current details of the applications are set out below.
Trade mark:  BOSS UP (‘Trade Mark’)
Trade mark number:           2256997
Filing Date:  18 March 2022 (‘Priority date’)
Specification:  Class 3: Cosmetics in the form of eye shadow; Foundation make-up; Face foundation creams; Foundation cream; Skin foundation; Mascara; Cosmetics in the form of mascara; Lipsticks; Moisturising skin creams (cosmetic); Cosmetic creams for toning the skin; Cosmetic creams for firming the skin; Barrier creams for the skin
Class 25: Apparel (clothing, footwear, headgear)
Class 32: Bottled water (not for medical purposes); Waters (beverages); Spring water (beverages), other than for medical purposes; Energy drinks
Class 33: Distilled alcoholic beverages; Alcoholic beverages (except beer)
Class 34: Cigarette tobacco; Tobacco; Tobacco cases; Containers for tobacco products; Holders for tobacco
(the ‘Opposed Goods’)
Trade mark:   (‘Device Trade Mark’)
Trade mark number:           2257215
Filing Date:  18 March 2022 (‘Priority date’)
Specification:  Class 3: Cosmetics in the form of eye shadow; Foundation make-up; Face foundation creams; Foundation cream; Skin foundation; Mascara; Cosmetics in the form of mascara; Lipsticks; Moisturising skin creams (cosmetic); Cosmetic creams for toning the skin; Cosmetic creams for firming the skin; Barrier creams for the skin
Class 25: Apparel (clothing, footwear, headgear)
Class 32: Bottled water (not for medical purposes); Waters (beverages); Spring water (beverages), other than for medical purposes; Energy drinks
Class 33: Distilled alcoholic beverages; Alcoholic beverages (except beer)
Class 34: Cigarette tobacco; Tobacco; Tobacco cases; Containers for tobacco products; Holders for tobacco
(the ‘Opposed Goods’)
Acceptance of the applications for possible registration was published in the Australian Official Journal of Trade Marks on 19 August 2022. Subsequently, Hugo Boss Trade Mark Management GmbH & Co. KG (‘the opponent’) filed its Notices of Intention to Oppose registration followed by its Statements of Grounds and Particulars[1].
[1] Which together constitute ‘the Notices’.
The applicant then filed its Notices of Intention to Defend. Thereafter, the opponent filed its evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’). The applicant has not filed any evidence in these proceedings or provided any written submissions for consideration.
The opposition came before me to be decided on the basis of the written record. The opponent provided written submissions for consideration by way of M Evetts of Counsel instructed by Corrs Chambers Westgarth.
Grounds of Opposition
The Notices nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’) and the grounds of opposition under sections 42(b), 44, 60 and 62A were pressed. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.
[2] [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[3] [2006] FCA 1663, [26].
Evidence
The evidence in these matters consists of the following declaration:
Evidence in Support
·Declaration of Paul Daly (‘Daly’), Vice President Finance & Admin CH of the opponent, made on 19 May 2023 including Exhibits PD-1 to PD-23
Discussion
Section 60 - Reputation in Australia
Section 60 of the Act provides:
60 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.
To establish the ground of opposition under section 60 the opponent is relying predominantly on its use of and reputation in a number of trade marks which I have marked as Appendix A to be found attached at the end of this decision. I will refer to these trade marks as the BOSS Trade Marks. However, the examples of use of the BOSS Trade Marks in the evidence are as follows:
I further note that many of the goods that the BOSS Trade Marks have been applied to are the same or similar to the Opposed Goods.
The principles relevant to the assessment of the likelihood of confusion were set out by French J in Registrar of Trade Marks v Woolworths: [4]
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:[5]
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
[4] [1999] FCA 1020 [50].
[5] [1973] HCA 43; (1973) 129 CLR 353, 362.
Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[6] by Kenny J:
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?
[6] [2000] FCA 1335 [81].
For background, Daly avers that the opponent is a German luxury fashion house established in 1924 by Hugo Ferdinand Boss, the brand originally focused on uniforms. According to Daly, from the late 1940s and following the end of World War II, the brand turned its focus from uniforms to high quality men’s suits. Currently, Daly asserts that the opponent is a major global fashion house that sells clothing, footwear and headgear[7], fragrances and body care products[8], leather goods, accessories, eyewear, watches and jewellery, amongst other items[9], by reference to the opponent’s various BOSS Trade Marks.
[7] Annexure PD-3 accompanying Daly.
[8] Annexure PD-6 accompanying Daly.
[9] Annexure PD-7 accompanying Daly.
The evidence establishes that the opponent has been using BOSS Trade Marks in Europe since 1924 and in Australia since 1979. The use of those marks has been continuous in Europe and Australia (and much of the rest of the world) in relation to a wide array of goods and the retailing of those goods including clothing (commenced in 1924 in Europe, 1979 in Australia), leather goods (commenced in 1978 in Europe, Approximately 1979 in Australia, fragrances (commenced in 1984 in Europe, 2002 in Australia), eyewear (commenced in 1996 in Europe, 1998 in Australia), watches (commenced in 1996 in Europe, 2006 in Australia) and childrenswear (commenced in 2009 in Europe, 2010 in Australia). According to Daly, at the Priority Date, the goods bearing the opponent’s BOSS Trade Marks were available in 128 countries in about 450 bricks and mortar stores as well as in self-managed shop-in-shops in major department store retailers and outlets[10].
[10] Daly [9].
Since at least 2004, BOSS branded goods have been continuously actively advertised, marketed and promoted in Australia on behalf of the Opponent by Hugo Boss’ Australian wholly-owned subsidiary, Hugo Boss Australia Pty Ltd[11]. According to Daly, such promotion has been through a wide variety of advertising channels, including print media in all of the leading magazines and newspapers in Australia, including the AFR, Vogue Australia and many others[12], billboard and poster advertising[13]; in-store promotional events[14], sponsorships[15], online promotion[16], and brand ambassadors, influencers and celebrities[17].
[11] Daly [25].
[12] Annexures PD-9 and PD-11 accompanying Daly.
[13] Daly [27]; Annexure PD-10 accompanying Daly.
[14] Daly [33]-[34]; Annexure PD-12 Accompanying Daly.
[15] Daly [36]-[47]; Annexures PD-4 and PD-13 accompanying Daly.
[16] Daly [48]-57]; Annexures PD-14 to PD-21 accompanying Daly.
[17] Daly [58]-[63]; Annexures PD-22 and PD-23 accompanying Daly.
The evidence also establishes that the opponent has used the BOSS Trade Marks on beverages and the retail of beverages[18] through promotional events and pop-up cafes as seen in the following examples:
[18] Daly [35] Annexure PD-12 accompanying Daly.
The figures provided in Daly in relation to the advertising expenditure in connection with goods bearing the BOSS Trade Marks is substantial[19].
[19] Daly [29].
The opponent has argued:
It is plain that the Opponent’s marketing and promotional activities have reached, and continue to reach, millions of people. By way of example only, the evidence establishes that:
(a) …the Opponent’s sales are considerable[20];
(b) the Opponent’s website has received in excess of 5 million hits from Australian IP Addresses in the four years from 2017-2021[21];
(c) the Opponent’s various social media pages have hundreds of thousands, and in some cases, millions of “likes” and “followers”, and these are representative of the number of the “likes” and “followers” these accounts had before the Priority Date[22]; and
(d) Boss Products have been worn by a multitude of brand ambassadors, influencers and celebrities in many different fields, who themselves have millions of followers. Such individuals include: Australian actor Chris Hemsworth[23]; politician Julie Bishop; international supermodel Kendall Jenner; golfer Martin Kaymer; tennis player Matteo Berrettini; soccer team FC Bayern Munchen; and the members of the Aston Martin F1 team[24].

The success of the Opponent’s marketing, promotion and sales strategy is evidenced by its financial success.
[20] Daly [26].
[21] Daly [48]; Annexure PD-14 accompanying Daly.
[22] Daly [50]-[57]; Annexures PD-15 to PD-21 accompanying Daly.
[23] Annexure PD-22 accompanying Daly.
[24] Daly [36]-[47]; [58]-63]; Annexure PD-23 accompanying Daly.
In considering the opponent’s financial success, I note that the opponent’s sales figures in Australia for its full range of products from 2017 to 2021 (which includes a significant period before the Priority Date) has been in the hundreds of millions of dollars[25]. Given all of the above, I am satisfied that the BOSS Trade Marks had acquired a reputation in Australia for many goods and a number of services including retail services before the Priority Date of the Trade Mark and the Device Trade Mark. It now needs to be determined if, given this reputation in Australia, use of either the Trade Mark or the Device Trade Mark would be likely to deceive or cause confusion.
[25] Daly [26].
Overall I consider that, given the reputation acquired by the BOSS Trade Marks, a significant number of consumers would at the very least experience a reasonable doubt[26] as to the existence of some sort of connection between the BOSS Trade Marks and the Trade Mark and Device Trade Mark if they were used on the Opposed Goods. In considering the similarities between the BOSS Trade Marks and the Trade Mark and Device Trade Mark it becomes clear that the respective trade marks all share some striking similarities.
[26] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 [594]-[595].
Below I have reproduced the most common examples of the opponent’s BOSS Trade Marks noting that there are many variations in font and differing placements on products and/or promotional activities which are found to have been used by the opponent in its evidence.

BOSS Trade Marks

Trade Mark and Device Trade Mark

BOSS

BOSS UP

Each trade mark features the prominent word BOSS. I note that some of BOSS Trade Marks contain additional words or stylisations and that the Trade Mark and the Device Trade Mark do contain the additional word UP and the Device Trade Mark also contains the graphic device of the lion head and crown. However, regardless of these additional and differing words and devices, all the respective trade marks are likely to be pronounced and viewed very similarly with strong emphasis on the word BOSS.
Whilst there are differences between the BOSS Trade Marks and the Trade Mark and Device Trade Mark, it is the similarities, which are most significant, whether visual, audible, distinctive or conceptual[27]. I am satisfied that there are striking similarities between the trade marks which add to the potential for confusion. This is particularly so when the opponent has demonstrated extensive use on the same and similar goods and services over a long period of time. I am satisfied it is highly likely that a significant number of consumers would at the very least experience a reasonable doubt[28] as to the existence of some sort of connection between the BOSS Trade Marks and the Trade Mark and Device Trade Mark, particularly when these trade marks are applied to the same or similar goods and services.
[27] Austin, Nichols & Co Inc. v Stichting Lodestar (2005) 11 TLCR 265 at [13].
[28] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5
I am satisfied that the opponent has established the section 60 ground of opposition in relation to all the Opposed Goods. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as set out in the Notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.
Decision
Section 55 of the Act provides:
55 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: Forlimitationssee section 6.
I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly, I refuse to register trade mark application no(s). 2256997 and 2257215.
Costs
The opponent requested its costs in the event of success in these two opposition matters. Both opposition matters had common evidence and this being the case I award against the applicant in terms of Schedule 8 of the Trade Mark Regulations 1995 in the following way:
·Full costs, as per scale, for filing the Notices on both matters;
·Full costs, as per scale, for the opposition to application 2256997; and
·At 20% of the scale[29] for the evidence on the remaining opposition.
[29] Hume Industries (Malaysia) Berhad v James Hardie & Co Pty Ltd (2001) 53 IPR 591
Bianca Irgang
Hearing Officer
Oppositions and Hearings
19 July 2024
Appendix A

[2024] ATMO 129

19 July 2024

Key Legal Topics

Areas of Law

Intellectual Property

Legal Concepts

Injunction

Remedies

Costs

Statutory Construction