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

HUGO BOSS Trade Mark Management GmbH & Co KG (the Opponent) opposed the application by Limboss Pte Ltd (the Applicant) to register the trade mark "LIMBOSS" in relation to clothing and apparel. The opposition was brought under section 52 of the *Trade Marks Act 1995* (Cth), with grounds including sections 42(b), 44, 58, 60, and 62A. The matter was heard by Tracey Berger in the Federal Court of Australia.

The primary legal issue before the Court was whether the Applicant's proposed trade mark "LIMBOSS" was deceptively similar to the Opponent's registered trade marks, particularly "HUGO BOSS", for the purposes of section 44 of the Act. Additionally, the Court considered whether the Applicant's use of "LIMBOSS" would be likely to deceive or cause confusion under section 42(b), whether the Applicant was the owner of the mark under section 58, and whether the mark should be refused registration on the grounds of it being applied for in bad faith under section 62A. Crucially, the Court also had to determine if the Applicant's mark was capable of becoming registered by virtue of section 60, which concerns the use of a trade mark by the applicant or its predecessors in title.

The Court found that section 60 of the *Trade Marks Act 1995* was established. This section allows for the registration of a trade mark even if it is deceptively similar to an earlier trade mark, provided that the applicant or its predecessor has used the mark consistently and in good faith from a date prior to the filing date of the earlier trade mark. The Court's reasoning focused on the evidence presented regarding the Applicant's prior use of the "LIMBOSS" mark. Having established section 60, the Court did not need to definitively determine the issues of deceptive similarity under section 44 or the other grounds raised.

The Court ordered that the trade mark application be refused registration.