HUGO BOSS Trade Mark Management GmbH & Co KG v Limboss Pte Ltd

[2023] ATMO 203

TRADEMARKSACT1995

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 2236440 (class 3) – LIMBOSS (fancy) - in the name of LIMBOSS PTE LTD

Delegate:

Tracey Berger

Representation:

Opponent: Hudson Gavin Martin

Applicant: Buddle Findlay

Decision:

2023 ATMO 203

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 is a decision on the opposition by HUGO BOSS Trade Mark Management GmbH & Co KG (‘Opponent’) pursuant to s 52 Trade Marks Act 1995 (Cth)1 to registration of the trade mark detailed below in the name of LIMBOSS PTE LTD (‘Applicant’):

Number:               2236440 (‘Application’)

Trade Mark:          (‘Trade Mark’)

Filing Date:           15 December 2021 (‘Relevant Date’)

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.

Specification:       Class 3: Beauty care preparations; Beauty masks; Blusher; Body care preparations (non-medicated); Cosmetic goods for care of the skin; Cosmetic pencils; Cosmetics; Eau de Cologne; Essential oils; Exfoliants; Eye pencils; Eyebrow cosmetics; Facial care products (cosmetic); Foundations for the face; Fragrances; Lip gloss; Lipsticks; Eye make-up; Make-up products; Make-up removing preparations; Make-up; Mascara; Nail care preparations; Nail polish; Non-medicated beauty preparations; Non-medicated lip balms; Non-medicated lip care preparations; Non-medicated products for the body; Non-medicated sun blocking preparations; Non-medicated toiletries; Pencils for cosmetic use; Pencils for eye lining; Perfumery products; Perfumes; Skin bronzing creams; Cosmetic products for skin care; Non-medicated products for skin care; Non-medicated skin care beauty products; Skin care products (cosmetic); Cream for skin whitening; Skin whitening creams; Sun bronzers; Sunscreens; Toiletry preparations (non-medicated)

(‘Applicant’s Goods’)

1. After the advertisement of acceptance of the Application for possible registration, the Opponent filed a Notice of Intention to Oppose on 1 June 2022 followed by a Statement of Grounds and Particulars (‘SGP’) on 30 June 2022. The Applicant filed a Notice of Intention to Defend on 15 August 2022.

2. The parties were then able to file evidence in accordance with the Regulations. The Opponent’s evidence in support was filed on 17 November 2022. The Applicant did not file any evidence in answer.

3. Following the conclusion of the evidence stage, the parties were given the opportunity to request a hearing. The Opponent requested a hearing without a decision. The Applicant did not ask to be heard. I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to decide, which I have done based on the aforementioned materials.

1. Grounds, Onus and Relevant Date

1. In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 44, 58, 60 and 62A.

1. 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. 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.

Opponent’s Evidence

1. The Opponent’s evidence consists of:

Declaration of Ishan Kokulan, Law Clerk employed by Hudson Gavin Martin, made on 17 November 2022 with Annexures IK-1 to IK-17 (‘Kokulan Declaration); and

Declaration of Paul Daly, Vice President Finance & Admin of the Opponent, made on 16 November 2022 with Exhibits XX-1 to XX-19 (‘Daly Declaration’).

1. According to the Daly Declaration, the Opponent was founded in 1923 and is a well-known luxury fashion house which sells clothing, accessories, footwear and fragrances (Opponent’s Goods’) under the marks BOSS, HUGO BOSS and marks containing BOSS (‘BOSS Trade Marks’). In 1969, the Opponent began exporting its goods. At the time of the Daly Declaration, the Opponent’s Goods were available in 128 countries being sold in 451 HUGO and BOSS stores as well as other retail outlets and through over 5,500 wholesale points of sale. In 59 countries, consumers can also shop online at the Opponent’s website (‘Opponent’s Website’).

2. Mr Daly attests that, in addition to the Opponent’s Goods, the Opponent is also known for its events, campaigns, sponsorships and partnerships including shows at international fashion week, art awards, international exhibitions and sponsorship of sports tournaments and athletes.

3. The Opponent has used the Opponent’s BOSS Trade Marks in Australia since 1979 for clothing, 1998 for eyewear, 2002 for fragrances, 2005 for watches and 2010 for childrenswear. The

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).

Opponent has 39 BOSS stores in Adelaide, Brisbane, Canberra, Melbourne and Sydney and its products are also sold by various third parties such as David Jones, The Iconic, Myer and Chemist Warehouse. The Opponent’s Goods are also offered for sale in Australian dollars at and type="1">

Mr Daly declares that the Opponent’s Goods have been extensively advertised in Australia since 1999. The Daly Declaration includes a summary of the Opponent’s advertising campaigns in Australia from 2015 to 2020 for fragrances as well as a summary of the Opponent’s annual advertising expenditure and annual turnover. The Opponent’s promotional activities include advertising in Australian airports, ferry terminals, bus shelters, on billboards, in magazines, on television and YouTube, on its social media accounts and in digital media including the online versions of major newspapers, magazines and airlines. The Opponent also targets Australian consumers by often featuring in its advertisements the Australian actor Chris Hemsworth, a global brand ambassador for the Opponent. A summary of the Opponent’s sales of fragrances by retailer and specific perfume for 2017-2019 is provided.

The Opponent licenses its BOSS Trade Marks to multinational beauty company COTY to manufacture fragrances, deodorants and other personal care products. Examples of use of the Opponent’s Marks in Australia by COTY Australia and invoices from COTY to retailers for sales of the Opponent’s Goods from 2018-2022 are provided.

The Daly Declaration notes that the Opponent owns over 100 Australian trade mark applications and registrations for its BOSS Trade Marks including registrations for BOSS solus (‘BOSS Mark’) in classes 3, 9, 14, 18, 23, 24, 25, 26, 28, 34 and 42.

The information in the Kokulan Declaration is essentially repeated in the Daly Declaration and appears to have been filed in case the executed Daly Declaration was not received before the deadline for filing evidence in support.

Discussion

Section 60

1. Section 60 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.

1. 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 of the other trade mark.

1. Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.4 Reputation cannot be assumed and must be established by the Opponent as a matter of fact.5

2. 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,6 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.7

3. 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.8

⁴ McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

⁵ Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

⁶ Ibid [118].

⁷ McCormick (n 4), [86].

⁸ [2019] FCA 923, [83] (O’Bryan J).

1. The reputation relied on by the Opponent must be amongst a significant or substantial number of persons.9 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.10 In the present case, the relevant market is considerable being Australians who purchase beauty and personal care products.

2. In its SGP, the Opponent particularised this ground of opposition as follows:

The Opponent is part of the well-known German luxury fashion house which sells clothing, accessories, footwear, fragrances and skincare under the BOSS Marks.

The Opponent commenced using the mark BOSS in Europe in 1924 (and in Australia since October 1984). In 2019, the Opponent reached global sales of €2.9 billion.

The Opponent has used the Opponent’s BOSS Marks extensively and globally over many years, including in Australia, in connection with clothing, accessories, footwear, fragrances and skincare.

The Opponent has actively advertised, marketed and promoted its BOSS Marks in Australia through the Opponent’s 38 Australian locations (in the Gold Coast, Sydney, Canberra, Melbourne, Adelaide and Perth) and online store.

As a result of the Opponent’s use of the Opponent’s BOSS Marks, including the marketing, advertising, promotion and sale undertaken by, on behalf of or at the direction of, the Opponent, the Opponent has established a substantial reputation in the Opponent’s BOSS Marks globally, including in Australia.

Due to the Opponent’s use of the Opponent’s BOSS Marks, the Opponent had developed a significant reputation in the Opponent’s BOSS Marks in Australia before the priority date of the Application.

Due to that reputation, and the similarity between Application and the Opponent’s BOSS Marks, the Applicant’s use of the Application would be likely to deceive or cause confusion.

1. A schedule of the BOSS Trade Marks relied on by the Opponent in support of this grounds is included at Annexure A.

2. The Opponent has used the BOSS Trade Marks in Australia and around the world for many years on a substantial scale. The Opponent offers a broad range of fashion and other goods under the

⁹ Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).

¹⁰ Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

BOSS Trade Marks which are sold through a large number of diverse sales points from luxury boutiques such as the Opponent’s BOSS stores, to department stores, to pharmacies including Priceline and Chemist Warehouse and online retailers. The evidence from the Opponent’s Website and third party websites illustrating use of the BOSS Trade Marks is undated, ‘[b]ut it is a commonplace of the law of evidence that later events may cast light upon the true position at an earlier date’.11 In my experience, the examples provided are typical of how the Opponent’s products have featured on such websites. Further, the Opponent generates very significant revenue from sales of fragrances in this country and spends substantial sums annually to promote its goods under the BOSS Trade Marks in Australia through differing medium directed at a large cross-section of consumers. The Applicant has not challenged the Opponent’s evidence or claims to a reputation in the BOSS Trade Marks either through evidence or submissions.

1. I am satisfied that the Opponent has a significant reputation in Australia in its BOSS Trade Marks for fragrances. Accordingly, I must now consider whether, given this reputation in Australia, use of the Trade Mark would be likely to deceive or cause confusion.

2. The likelihood of deception or confusion must be real and tangible.12 Consumers need not think that the respective marks are the same. It is sufficient if consumers would have cause to wonder if the goods or services provided under the Trade Mark are being provided by the same person as the owner of the mark in which the reputation has been established.13

3. The Applicant’s goods include fragrances and perfumery products which are the same as the Opponent’s fragrances. The Applicant’s Goods include various other beauty products which goods are generally sold through the same trade channels to the same class of consumers as fragrances. Further, I note that it is common for luxury fashion brands to also have a line of beauty products including GUCCI, EMPORIO ARMANI, CHANEL and DIOR. Whilst there is no requirement that the Applicant’s Goods are similar to those in which the Opponent has a

¹¹ Conde Nast Publications Pty Ltd v Virginia Taylor (1998) 41 IPR 505, 509 (Burchett J).

¹² Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 952, 595.

¹³ Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd (2016) 122 IPR 232, [76] (Davies J).

reputation, an opposition is more likely to succeed under s 60 where the parties’ marks are to be used for similar goods or services.14

1. It is also not required under s 60 that the marks in question be deceptively similar but it has been noted 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

2. In the present case, the Opponent has extensive use of the BOSS Mark in its evidence. The word BOSS is wholly contained in the Trade Mark which gives the two marks a degree of similarity. Further, there is no evidence that other traders use marks containing the word BOSS for fragrances or beauty products. Also, the Opponent’s evidence demonstrates that it uses its BOSS Mark in varying ways and with differing prominence as shown in the examples below:

1. I am satisfied that given the nature and extent of use of the Opponent’s BOSS Mark as well as its various BOSS Trade Marks that a significant number of consumers would be likely to wonder whether there is a connection between goods bearing the Trade Mark and those of the Opponent.

¹⁴ M Davidson, I Horak Shanahan’s Australian Law of Trade Marks & Passing Off (online 7^th ed), 2022 Thomson Reuters, [50.2415]

¹⁵ Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [39] (emphasis in original). See also Qantas Airways Ltd v Edwards [2016] 338 ALR 134, [142] (Yates J).

1. I have found that the Opponent has a reputation in the BOSS Trade Marks in Australia for fragrances and as a result of that reputation, use of the Trade Mark is likely to deceive or cause confusion. Accordingly, the s 60 ground of opposition is successful.

Decision

1. I find that the Opponent has established a ground of opposition under s 60. Accordingly, I refuse to register trade mark number 2236440.

2. Costs generally follow the event and as the Opponent has requested its costs, I award costs against the Applicant in accordance with the amounts set out in Schedule 8 of the Regulations.

Tracey Berger Hearing Officer

Delegate of the Registrar of Trade Marks 6 December 2023

ANNEXURE A – BOSS Trade Marks

Number	Trade Mark	Class	Registered From
345175	BOSS	25	18 April 1980
416698	BOSS	3	11 October 1984 (Priority claimed 3 July 1984)
442954	BOSS	25	26 March 1986
461858	BOSS Registered under provisions of paragraph 45(1)(b). The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.	9	18 March 1987
461859	BOSS	34	2 December 1994
461860	BOSS	28	18 March 1987
461861	BOSS	18	18 March 1987
461875	BOSS	14	18 March 1987
46187616	BOSS	42	18 March 1987
516998	BOSS	24	14 August 1989
614931	3	27 October 1993
647104*17	BOSS	9	30 November 1994

¹⁶This registration is incorrectly identified in the SGP as 461879 which registration number covers HUGO BOSS in class 34.

¹⁷ * denotes defensive trade mark registration.

647105*	BOSS	14	30 November 1994
647106*	BOSS	18	30 November 1994
647107*	BOSS	24	30 November 1994
647108*	BOSS	25	30 November 1994
647109*	BOSS	28	30 November 1994
647377*	BOSS	34	18 March 1987
704104	BOSS ELEMENTS AQUA	3	8 March 1996
798307	The trade mark consists of the words HUGO and HUGO BOSS combined with the three dimensional shape of a bottle as depicted in the representations attached to the application form.	3	25 June 1999
902472 (IR 773035)	BOSS	9, 14, 18, 24, 25, 28 & 34	16 August 2001
908173 (IR 776444)	BOSS	23, 24 & 26	30 January 2002
927959	BOSS IN MOTION	3	20 September 2002
94336518 (IR 765302)	BOSS INTENSE	3	2 January 2003

¹⁸ Registration ceased in July 2023 for non-renewal

1020390 (IR 831152)	Trade Mark Description: Colour Claimed: WHITE, SILVER GREY, DARK RED. The trade mark consists of a three- dimensional box with the words BOSS and HUGO BOSS in WHITE on a SILVER GREY background and the word WOMAN in DARK RED on a WHITE background, all of which are displayed across one of the faces of the packaging, as shown in the representation of the trade mark attached to the application form.	3	28 May 2004 (Priority claimed 5 December 2003)
1023439 (IR 832231)	3	17 July 2004 (Priority claimed 30 April 2004)
1031744	BOSS SKIN	3	25 November 2004 (Priority claimed 18 June 2004)

1078781 (IR 860974)	Shape mark Colour Claimed: BLACK, GRENADINE RED, SILVER.	3	5 August 2005 (Priority claimed 9 February 2005)
1089309 (IR 868959)	BOSS HUGO BOSS SELECTION	3	10 October 2005 (Priority claimed 8 April 2005)
1227928 (IR 852458)	BOSS Orange Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.	3, 18 & 25	28 December 2007
1276774 (IR 984620)	BOSS BOTTLED	3	10 October 2008
1754686 (IR 1289378)	Colour Claimed: MATTE BLACK, SHINEY BLACK, GOLDEN.	3	27 October 2015 (Priority claimed: 20 June 2015)

1771627 (IR 1297788)	Colour Claimed: SILVER and AMBER.	3	27 October 2015 (Priority claimed 16 June 2015)
1809831 (IR 13198522)	Colour Claimed: LIGHT PINK, SILVER and WHITE.	3	30 June 2016 (Priority claimed 14 June 2016)
1811258 (IR 1320354)	3	30 June 2016 (Priority claimed 14 June 2016)

Colour Claimed: DUSKY PINK, GOLD and LIGHT PINK.
1885841 (IR 1373865)	BOSS THE SCENT	3	13 September 2017 (Priority claimed 17 March 2017)
2045147	HUGO BOSS	3	21 October 2019