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

This decision concerns opposition proceedings before a Hearing Officer of the Australian Trade Marks Office. The opponent, Hugo Boss Trade Mark Management GmbH & Co. KG, sought to oppose the registration of two trade mark applications by Boss Up Pty Ltd, identified as application numbers 2256997 and 2257215. The dispute centred on the ground of opposition under section 60 of the *Trade Marks Act 1995* (Cth), which relates to trade marks that have acquired a reputation in Australia.

The Hearing Officer was required to determine whether the opponent's existing trade marks, referred to as the BOSS Trade Marks, had acquired a reputation in Australia prior to the priority date of the opposed applications. The core legal issue was whether, due to the reputation of the BOSS Trade Marks, the use of the trade marks sought to be registered by Boss Up Pty Ltd would be likely to deceive or cause confusion among consumers. The assessment involved considering the principles of likelihood of confusion as established in case law, including the ordinary person's potential to wonder if the products or services originated from the same source, and the need to consider all surrounding circumstances, such as the manner of use and the character of probable acquirers.

The Hearing Officer found that the opponent had discharged the onus of proof in establishing the ground of opposition under section 60. This conclusion was based on the evidence presented, which demonstrated the opponent's use of and reputation in the BOSS Trade Marks, with many of these marks applied to goods that were the same or similar to those specified in the opposed applications. Applying the principles of deceptive similarity and likelihood of confusion, the Hearing Officer determined that registration of the trade marks would be likely to deceive or cause confusion. Consequently, the Hearing Officer refused to register the trade mark applications. The opponent was awarded its costs in both opposition matters.