Hugo Boss Trade Mark Management GMBH & Co. KG. v Tuan Tai Vu

[2011] ATMO 131

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 1319909 (25) -BOSSPABINI - filed in the name of Tuan Tai Vu.

DELEGATE:         Bianca Irgang

REPRESENTATION:           Opponent: Mr Tim Allen of Corrs Chambers Westgarth Applicant: Not present at the hearing

DECISION:         2011 ATMO 131

s. 52 opposition: sections 44 and 60 pressed – s 60 ground of opposition established for all services - trade mark use likely to deceive or cause confusion - no requirement to consider other grounds - costs awarded against the applicant.

Background

1.        Tuan Tai Vu (‘the applicant’) filed application number 1319909 on 11 September 2009 in class 25 of the International Classification of Goods and Services. Details of the application are set out below.

Trade mark:  BOSSPABINI Trade mark application: 1319909 Filing Date: 11 September 2009 Specification: Class 25: Ladies clothing; men's clothing

2.        Hugo Boss Trade Mark Management GMBH & Co. KG. (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 14 April 2010. Thereafter the parties served and filed evidence as allowed by the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

3.        I heard the matter in Melbourne as a delegate of the Registrar of Trade Marks on 20 September 2011. Mr Tim Allen of Corrs Chambers Westgarth, Lawyers represented the opponent. The applicant did not attend the hearing or provide written submissions. 

Grounds of Opposition

1           The Notice nominated most of the grounds of opposition available under the Act.  The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.¹ His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks².

2           At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on those grounds under sections 44 and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that these grounds have not been established.

3           Therefore, the grounds remaining for my consideration are those under sections 44 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods and services specification, there is no requirement for the other ground of opposition to be considered. 

Evidence

7.        The evidence of the parties consists of the following declarations:

1.

¹ See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 ² [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

Opponent’s Evidence

8.        Mr Herre declares that the opponent commenced using its trade marks BOSS and HUGO BOSS in Europe since 1924 and in Australia since 1979. The use of those trade marks has been continuous from the dates below in relation to a wide range of goods including:

9.        The opponent’s core BOSS brand currently has four fashion lines namely BOSS Black, BOSS selection, BOSS orange and BOSS green. The opponent has obtained registration of these trade marks and similar variations in Australia and each registration predates the opposed trade mark application. The details of the opponent’s most relevant trade mark registrations are as follows:

10. Mr Herre states that the opponent has imported its products into Australia for sale in BOSS and HUGO BOSS shops and stores, both directly operated and franchised. The opponent has also sold clothing through third party retailers throughout the country since at least 1979. Initially the opponent’s goods were sold in Australia through David Jones, Myer, Cavalier Menswear, High and Mighty Gentlemens Outfitters, The Coachman Menswear, Flair Outfit Store and Tony Barlow Menswear amongst others. Mr Herre states that the mainstay of the opponent’s sales in Australia is its clothing products which all bear either the BOSS or HUGO BOSS trade marks either on the products themselves or on tags or labels attached to the products (annexure JE-4 and JE-5).

11. As at 11 September 2009 (the priority date of the opposed application) the Opponent’s products were available in 110 countries around the world (including Australia) and at over 6,100 points of sale. The opponent also has many points of sale in Australia and its BOSS and HUGO BOSS retail stores are located in Adelaide, Brisbane, Canberra, Melbourne, Noosa Heads, Perth and Sydney.  

12. Since 1979 the opponent has continued to receive regular orders from its Australian stores and resellers who offer the opponent’s goods for sale to Australian customers under the BOSS or HUGO BOSS trade marks. The opponent’s evidence demonstrates that sales of its products in Australia have consistently increased since they were first offered for sale. The opponent’s sales in Australia for its full range of products in the years 2005-2009 were very considerable.

13. Mr Herre attests that the opponent’s products have been actively advertised, marketed and promoted by and on its behalf in Australia since 2004 by Hugo Boss’ Australian subsidiary, Hugo Boss Australia Pty Ltd. From 1999 until 2003 the advertising, marketing and promotion of the opponent’s goods under or by reference to either the BOSS or HUGO BOSS trade marks was handled by HUGO BOSS AG. The advertising figures provided by the opponent are considerable.    

14. The opponent’s products are promoted in the Australian stores as well as in the retail outlets of the opponent’s resellers (annexure JE-2). The opponent’s advertising campaigns have included advertisements in major magazines include Vogue Australian Harper’s BAZAAR Australia, Marie Claire Australia, InStyle Australia, GQ Australia,, Qantas The Australian Way, The Age (Melbourne) Magazine and The (Sydney) Magazine (annexure JE-3). The opponent has also advertised its products through product placement and sport sponsorship deals (annexure JE-4).

Discussion

Section 60 - Reputation in Australia

15. 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.

16. To establish the ground of opposition under section 60, the opponent must demonstrate:

¾ That, at the priority date of the opposed application, another trade mark had acquired a reputation in Australia; and

¾ That because of the reputation of that other trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.

17. Section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the claimed specification of goods to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I note that the goods of the opponent and the applicant in this case are the same namely men and women’s clothing.

18. It is now for me to determine if the opponent has acquired a reputation in Australia for its BOSS trade marks which is sufficient to establish that use of the opposed BOSSPABINI trade mark would be likely to deceive or cause confusion. This is more than the opponent merely indicating prior use, the opponent’s trade mark needs to be “associated in the minds of the Australian public”³ to such a degree that confusion is likely.

19. In relation to reputation Justice Kenny states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

At 129 Justice Kenny continues: 

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …

20. Mr Herre states that the opponent has been offering goods bearing its BOSS and HUGO BOSS trade marks for sale in Australia since at least 1979 although evidence of advertisements from this early date is not present in the evidence. However, the

1. ³ Seven Up Co v OT Ltd (1947) 75 CLR 203 at 211

statutory declaration of Mr Richard Bowman (‘the Bowman declaration’) states that he has been aware of the BOSS and HUGO BOSS products since around 1990 due to its market presence in Australia. The statutory declaration of Mr Simeon Sparks (‘the Sparks declaration’) states that he became aware of the BOSS and HUGO BOSS brands in around 1995 when he started employment with Cavalier Menswear which was already stocking the opponent’s products. It is clear from this evidence that the opponent has been using its BOSS and HUGO BOSS trade marks in Australia since at least 1990 which is before the priority date of the opposed trade mark. 

21. The statutory declaration of Mr Herre outlines that since 2005 and until 2009 the value of goods sold to Australian distributors for sale in the Australian marketplace is very significant. Mr Herre’s declaration also outlines significant advertising expenditure by the opponent on its BOSS branded products.  It is also demonstrated in the Herre declaration (annexures JE-2 to JE-4) that advertising of its BOSS and HUGO BOSS products has been on-going and wide-spread across Australia. The promotion of the BOSS and HUGO BOSS brands in Australia is further supported by the Bowman and Sparks declarations.

22. The Bowman and Sparks declarations have been made by third parties with many years experience within the clothing/fashion industry in Australian. These declarations support Mr Herre’s assertions that Australian consumers recognize and associate the opponent’s products with the shorter word BOSS rather than the BOSS Orange, BOSS Black etc. Mr Bowman declares that customers looking for the opponent’s products use language such as ‘Is this the Boss store?’ or ‘I want Boss’. The Spark declaration is consistent with the Bowman declaration in that it supports and reiterates the customer awareness of BOSS products. 

23. Taken all together, I am satisfied that the opponent had a significant reputation in Australia for its BOSS trade mark before the priority date of the applicant’s trade mark. However, it needs to be determined if, given this reputation in Australia, use of the applicant’s trade mark would be likely to deceive or cause confusion.

24. For the necessary comparison, I would put the matters as follows. I am not to be overly influenced by the evidence that the disputing parties use their trade marks in ways that, at the moment, may be quite different. I am to consider any of the modes of business that would be within the scope of the registration, should it be granted in the

terms presently sought. In essence, the question comes down to my being satisfied that there is a “finite and non-trivial” risk of deception or confusion⁴, based on the proper allowance for the possibility of imperfect recollection of one trade mark at a time when only the other and competing trade mark is present.

25. The applicant’s trade mark is the word BOSSPABINI. I am satisfied that the trade mark would most likely be pronounced BOSS-PABINI. While other pronounciations may be possible I believe that the general monolingual Australian consumer would likely say BOSSPABINI by placing a certain amount of emphasis on the BOSS- prefix of the trade mark. The opponent’s various BOSS trade marks have been used in a number of different contexts as seen in the evidence and it is clear that the opponent has a substantial reputation in its family of BOSS trade marks within the clothing/fashion industry. Overall, I consider that, given the considerable and growing reputation evidenced by the opponent in its BOSS trade marks, a significant number of consumers would at the very least experience a reasonable doubt⁵ as to the existence of some sort of connection between the opponent’s trade mark and the applicant’s trade mark.

26. Mr Spark says that the customers he has dealt with through the course of his dealings in the industry almost always refer to the opponent’s products by the name BOSS. Mr Spark further attests that as a result of his experience in the industry he believes it is likely that given the opponent’s various BOSS lines of products that consumers who come across a similar product branded with BOSSPABINI would automatically think that this was another BOSS brand from the opponent. Mr Bowman shares this opinion.

27. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all the applicant’s goods and services. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds set out in the notice, although this ground or any others in the Act may also be relied upon in the event of an appeal from this decision.

1.

⁴ Registrar of Trade Marks v Woolworths Limited (1999) AIPC 91-499 at 36, 697-8 (per Justice French) and 39, 703-4 (per Justice Branson)⁵ Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

Decision

28. Section 55 of the Act provides: 

Decision

Unless the proceedings are discontinued or dismissed, 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.

29. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60 argued at the hearing. Accordingly, I refuse to register trade mark application 1319909.

Costs

30. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the unsuccessful trade mark applicant Tuan Tai Vu.

Bianca Irgang Hearing Officer Trade Marks Hearings 23 December 2011