Opposition by Hugo Boss Trade Mark Management GmbH & Co. KG to registration of trade mark application number 2175870 (9, 25, 36, 38, 41) – BIG BOSS GROUP – in the name of Big Boss Group Pty Ltd

[2024] ATMO 91

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 number 2175870 (9, 25, 36, 38, 41) – BIG BOSS GROUP – in the name of Big Boss Group Pty Ltd

Delegate:	Louise Tuohy
Representation:	Opponent: Megan Evetts of Counsel instructed by Corrs Chambers Westgarth Applicant: Not represented
Decision:	2024 ATMO 91 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b) 44, 60 and 62A considered – section 44 established for disputed goods – no other grounds established – application to proceed to registration for restricted specification

Background

1. This matter concerns an opposition by Hugo Boss Trade Mark Management GmbH & Co. KG (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark application (‘Application’) in the name of Big Boss Group Pty Ltd (‘Applicant’):

   [1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.  

Trade Mark Number:             2175870

Trade Mark:   (‘Trade Mark’)

Filing Date:  14 May 2021

Specification:  Class 9: Articles of clothing for protection against acids; Articles of clothing for protection against fire; Articles of clothing specifically adapted for protection against accident; Eyewear in relation to eye protection and eye safety in the field of trades; Sun visors (eyewear) in relation to eye protection and eye safety in the field of trades; Aerials for telecommunications; Apparatus for telecommunications engineering; Digital telecommunications instruments; Earth satellites for use in telecommunications; Insulated telecommunications cables; Mobile telecommunications apparatus; Telecommunications apparatus; Telecommunications devices; Telecommunications equipment; Telecommunications networks; Apparatus for conducting scientific experiments in satellites; Intercommunication satellites; Microwave antenna for the reception of satellite data; Satellite apparatus; Target surveillance apparatus (satellite); Target trackers (satellite); Transmitting apparatus for satellite broadcast; Education software; Computer data input devices; Computer databases; Data carriers; Data communications hardware; Data communications software; Data compilations; Data networks; Data processing devices; Data processing software; Databases; Databases (electronic publications); Electrical data input devices; Electronic data carriers; Electronic data files; Electronic data processing devices; Image data capture devices; Installations for data processing; Microchips for recording data; Microcircuit data carriers; Mobile data instruments; Real-time data processing apparatus; Cryptocurrency wallets; Cryptographic apparatus; Downloadable cryptographic keys for receiving and spending cryptocurrency; Firmware for small decentralised control systems; Scientific apparatus and instruments

Class 25: Apparel (clothing, footwear, headgear) for safety and protection uniforms and workwear; Occupational clothing (other than for protection against accident or injury); Smart clothing (clothing which incorporates digital components); all for use only by business owners, tradespersons, cleaners, industrial workers, and occupational health and safety workers in the field of workwear
Class 36: Brokerage of real estate; Real estate agencies; Real estate agency services; Real estate consultancy; Real estate financing; Real estate insurance services; Rental of real estate; Cryptocurrency investment consultancy
Class 38: Digital network telecommunications services; Radio telecommunications; Satellite telecommunications services; Telecommunications; Telecommunications advisory services; Broadcast transmission by satellite; Broadcasting of programmes by satellite; Communication services by satellite; Data communication services; Electronic data communications; Electronic data interchange services; Transmission of data
Class 41: Academies (education); Business educational services; Education services; Foreign language education services; Mentoring (education and training); Occupational health and safety services (education and training services); Physical health education; Publication of educational materials; Vocational education; Vocational guidance (education or training advice); Electronic publication of information on a wide range of topics, including online and over a global computer network

(‘Applicant’s Goods and/or Services’)

1. The Application was examined as required by s 31 and advertised for possible registration on 15 October 2021.

2. On 9 November 2021 the Opponent filed a Notice of Intention to Oppose the registration of the Trade Mark followed by its Statement of Grounds and Particulars (‘SGP’) on 8 December 2021. The Applicant filed a Notice of Intention to Defend on 14 February 2022.

3. Thereafter the parties filed evidence in accordance with the Regulations. The Opponent filed the following Evidence in Support:

• Declaration of Paul Daly, Vice President Finance and Administration for the Opponent, made on 23 January 2023, with Annexures PG-1 to PD-21.

1. The Applicant filed the following Evidence in Answer:

• Declaration of Cherry Dimapilis, Chief Executive Officer of the Applicant, made on 26 April 2023, with Exhibits CD-1 to CD-4.

1. The Opponent did not file any Evidence in Reply.

2. Once time for filing evidence had ended both parties were given the opportunity to either request an oral hearing or hearing by way of written submissions. The Opponent requested an oral hearing via videoconference. The Applicant did not request a hearing. The Opponent filed its written submissions on 8 April 2024. I heard the matter on 18 April 2024. Megan Evetts of Counsel instructed by Stephen Stern of Corrs Chambers Westgarth appeared by videoconference for the Opponent providing oral submissions. As a delegate of the Registrar of Trade Marks I will decide this matter based on the SGP, evidence and submissions.

Grounds of Opposition, Relevant Date and Onus

1. In the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A. At the hearing the Opponent stated that its opposition is limited to the following goods and services:

   Class 9: Articles of clothing for protection against acids; Articles of clothing for protection against fire; Articles of clothing specifically adapted for protection against accident; Eyewear in relation to eye protection and eye safety in the field of trades; Sun visors (eyewear) in relation to eye protection and eye safety in the field of trades

   Class 25: Apparel (clothing, footwear, headgear) for safety and protection uniforms and workwear; Occupational clothing (other than for protection against accident or injury); Smart clothing (clothing which incorporates digital components); all for use only by business owners, tradespersons, cleaners, industrial workers, and occupational health and safety workers in the field of workwear

   (‘Disputed Goods’)

   Class 41: Academies (education); Business educational services; Education services; Foreign language education services; Mentoring (education and training); Physical health education; Publication of educational materials; Vocational education; Vocational guidance (education or training advice); Electronic publication of information on a wide range of topics, including online and over a global computer network

   (‘Disputed Services’)

2. The date at which the rights of the parties are to be determined is the filing date 14 May 2021 (‘Relevant Date’) which is also the priority date for the purposes of ss 44 and 60.

3. The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

   [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, [132] (Besanko, Jagot and Edelman JJ).

Discussion

The Opponent

1. The Opponent is the brand owning entity within the Hugo Boss group of companies (‘Hugo Boss’). Hugo Boss is a German luxury fashion house. Established in 1924 by Ferdinand Boss the business originally focused on uniforms before expanding to clothing more generally. Today Hugo Boss designs, manufactures and distributes items of clothing, leather goods, accessories, glasses, footwear, watches and fragrances, amongst other goods. The Opponent has been using its BOSS trade marks in Europe since 1924 and in Australia since 1979.

2. For clarity any references to the Opponent should be understood as referring to the use and promotion of the BOSS trade marks by licensees and predecessors in title of the Opponent.

The Applicant

1. The Applicant is a family owned Australian company established in 2019. The Applicant is engaged in the supply of special safety and protection clothing, real estate services, telecommunications services and educational services including occupational health and safety.

Section 44

1. Section 44 relevantly provides:

   44  Identical etc. trade marks

   (1)     Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)    the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)    the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)  it is substantially identical with, or deceptively similar to:

   (i)  a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)  a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   […]

1. In the SGP the Opponent particularises the s 44 ground of opposition as follows:

   The Opposed Mark is substantially identical with or deceptively similar to the following Australian trade mark registrations and applications in the name of the Opponent in classes 9 and 25 (the BOSS Marks). The Boss Marks cover a range of goods, including clothing, footwear and headgear as well as various eyewear products and parts and accessories therefor, which are the same as some of the goods covered by classes 9 and 25 of the application including apparel (clothing, footwear, headgear) and eyewear.

Trade Mark No	Mark	Class
345175	BOSS	25
442954	BOSS	25
442955	HUGO BOSS	25
461858	BOSS	9
647104	BOSS	9
902472	BOSS	9, 14, 18, 24, 25, 28, 34
1248320	BOSS Kidswear	9, 18, 25
2168856	BOSS	9, 14, 16, 18, 20, 24, 25, 28

1. To satisfy the s 44 ground of opposition, the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date in the name of a person other than the Applicant, and in respect of similar goods to the Disputed Goods. 

2. Each of the Opponent’s trade marks are in the name of a person other than the Applicant and have a priority date that is earlier than the Relevant Date of the Trade Mark.

3. The next consideration is whether the Opponent’s goods are similar to the Disputed Goods. Pursuant to s 14(1) ‘similar goods’ are goods that are the same, or of the same description. The determination of whether goods are similar involves the consideration of a number of factors including the nature, use and trade channels of the goods.[4]

   [4] Jellinek’s Application (1946) 63 RPC 59 (Romer J);Beck, Koller & Company’s Application (1947) 64 RPC 76.

4. The Opponent’s trade marks 461858, 647104, 902472, 1248320 and 2168856 are registered for spectacles or eyewear, parts and/or accessories thereof in class 9. The Opponent’s trade marks 345175, 442954, 442955, 902472, 1248320 and 2168856 are registered for clothing, headwear and footwear in class 25. 

5. The Trade Mark claims Articles of clothing for protection against acids; Articles of clothing for protection against fire; Articles of clothing specifically adapted for protection against accident; Eyewear in relation to eye protection and eye safety in the field of trades; Sun visors (eyewear) in relation to eye protection and eye safety in the field of trades in class 9 and Apparel (clothing, footwear, headgear) for safety and protection uniforms and workwear; Occupational clothing (other than for protection against accident or injury); Smart clothing (clothing which incorporates digital components); all for use only by business owners, tradespersons, cleaners, industrial workers, and occupational health and safety workers in the field of workwear in class 25.

6. The Opponent argues that whilst the Applicant has sought to confine its clothing registrations by way of a limitation, it has registrations that cover clothing of all kinds. The Opponent submits that its goods in classes 9 and 25 are the same or of the same description to the Disputed Goods. The Opponent submits that the inherent nature of its goods is the same; they have the same or relevantly similar uses; they are sold through the same trade channels; they have the same or similar purposes; they are typically produced by one and the same manufacturers or distributed by the same entity or group of entities; and they would be regarded by those engaged in their manufacturer and distribution as belonging to the same trade. 

7. The Applicant argues that the nature of its safety and protection clothing and gear are clearly different to the Opponent’s goods which are luxury products.

8. In assessing the similarity of goods, I am to consider if the Disputed Goods could reasonably be expected to fall within the goods specified in the Opponent’s registration.[5] The Opponent’s trade marks 461858, 647104, 902472, 1248320 and 2168856 are registered for the full range of eyewear or spectacles and/or sunglasses products in class 9 and this broad coverage contains goods which would be similar to the Applicant’s eyewear goods. In relation to class 25, the Opponent has broad coverage for clothing, headgear and footwear which would include goods which are similar to the Disputed Goods in class 25. I also consider the Opponent’s class 25 coverage will contain goods which would be similar to the items of protective clothing claimed by the Applicant in class 9 as both can be described as clothing products. While the overarching purpose of the Disputed Goods is for personal protection and safety and for wear by selected professions, the goods are sold through the same trade channels as a variety of workwear.

   [5] Re Smith Hayden and Co’s Application (1946) 63 RPC 97 [101] (Evershed J).

9. I will now consider whether the Trade Mark is substantially identical or deceptively similar to the Opponent’s trade marks. For the purposes of comparison, I only need to consider the Opponent’s trade marks 345175 (‘175’) and 902472 (‘472’). Trade marks 175 and 472 are registered for the broadest range of eyewear and clothing goods in classes 9 or 25 and are both for the word BOSS solus. Were I to find that these trade marks are not substantially identical with or deceptively similar to, the Trade Mark, I would by necessity reach the same conclusion with the remainder of the Opponent’s trade marks each of which is for the word BOSS solus or contain additional elements that further distinguishes them from the Trade Mark.

10. The test for substantial identity requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[6] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. For the purposes of comparison I have reproduced the respective trade marks below:

    [6] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).

Trade marks 175 and 472

BOSS

Trade Mark

1. On a side by side comparison I find that 175 and 472 are not substantially identical with the Trade Mark. Trade marks 175 and 472 are for the plain word BOSS solus. In comparison the Trade Mark consists of the words BIG BOSS GROUP. For these reasons, the total impression emerging from a side by side comparison is not one of similarity.

2. I have found that the respective trade marks are not substantially identical. The remaining question is whether the Trade Mark is deceptively similar to the BOSS trade marks.

3. The expression ‘deceptively similar’ is defined by s 10:

   10  Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

4. In the case of Australian Woollen Mills v F. S. Walton and Company Ltd, Dixon and McTiernan JJ provided the relevant test for comparison:

   [T]he marks ought not…be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same…The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.[7]

   [7] [1937] HCA 51; (1937) 58 CLR 641, [658].

5. In the recent High Court case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the Court noted the following[8]:

   In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[9]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[10], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[11]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark[12]

   [8] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [9] New South Wales Dairy Corporation v Murray-Goulburn Cooperative Co Ltd [1989] FCA 124; (1989) 86 ALR 549 at 589 (emphasis added), approved in Henschke (2000) 52 IPR 42 at 62 [44], Hashtag Burgers [2020] FCAFC 235; (2020) 385 ALR 514 at 532 [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8; (2021) 157 IPR 230 at 238 [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598 at 622 [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42 at 56 [73].

   [10] Act, s 68.

   [11] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549 at 589.

   [12] Swancom (2022) 168 IPR 42 at 59 [89]. See also Henschke (2000) 52 IPR 42 at 62 [44].

1. In the present case, the Opponent submits that the word BOSS is wholly encompassed in the Trade Mark, and is the essential feature of the Trade Mark and trade marks 175 and 472. The inclusion of the words BIG and GROUP in the Trade Mark does not result in the trade marks being substantially different visually or aurally, and does not result in the trade marks eliciting different ideas.

2. The Opponent states that the word GROUP is descriptive and commonly used in the trade to indicate a collection of parent and subsidiary corporations that function as a single economic entity through a common source of control. The word BIG is also descriptive. When used together as BIG BOSS GROUP, the additional words simply serve to imply that BIG BOSS GROUP is the larger collection of Boss related companies. As a consequence, to the extent that consumers did have regard to these additional descriptive words, these words would cause consumers to think that there is an economic connection to the Opponent and that it is a reference to the global group of companies that the Opponent is a part of, or a collaboration between the Opponent and another trader.

3. Furthermore, the Opponent submits that the stylisation of the Trade Mark does not substantially affect the visual appearance of the Trade Mark, nor does it affect how the Trade Mark will be used aurally, or the idea elicited by the Trade Mark.

4. In response the Applicant states that the Trade Mark itself bears no deceptive similarity to BOSS or HUGO BOSS. The Applicant states that each trade mark is quite distinct not only visually but also phonetically and the “idea” of the Trade Mark is quite different. This is so particularly with the inclusion of the first part of the word BIG which is more readily recalled and the impression left as to the striking blue, red and green colours as well as the stylised lettering used in the Trade Mark. 

5. On balance, I agree that the word BOSS is distinctive and memorable. I do not accept the Applicant’s submission that BIG BOSS GROUP and BOSS convey different meanings. I agree with the Opponent that the words BIG and GROUP are descriptive and when used together would likely cause consumers to think that there is an economic connection to the Opponent. I also consider the addition of the words BIG and GROUP do not significantly alter the imperfect recollection of the ordinary consumer, who would more likely notice and remember the common element BOSS in the context of the marketplace for eyewear and clothing, because it is unusual and highly distinctive of the goods.

6. I note the Applicant’s submission that the Trade Mark is presented in the colours blue, red and green and is presented in stylised script. However, the Trade Mark it is not limited to these colours and the font is familiar with no hint of novelty. As such, I am satisfied that there is a real and tangible danger of confusion in that the consumers of the Opponent’s goods in classes 9 and 25 would think that the Trade Mark indicates goods put on the market by the Opponent under a related sub-brand. I find that the Trade Mark is deceptively similar to trade marks 175 and 472.

7. The Applicant has not sought to have the application accepted under the provisions of ss 44(3)(a) or 44(4) nor am I aware of any other circumstances that would make it proper to accept the application pursuant to s 44(3)(b). Therefore, I am satisfied that the Opponent has established the s 44 ground of opposition in relation to the Disputed Goods.

8. The s 44 ground does not cover the Disputed Services. I now turn to consider the s 60 ground.  

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 firstmentioned 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 firstmentioned trade mark would be likely to deceive or cause confusion.

1. In the SGP the Opponent particularises the s 60 ground of opposition as follows:

   The Opponent has, before the priority date of the Opposed Mark, acquired a reputation in the trade marks BOSS and HUGO BOSS applied to and in relation to a range of goods including clothing, footwear, headgear, accessories, jewellery, fragrances and leather goods as well as the retailing and wholesaling services in relation to such goods and promotion and marketing services (Opponent’s Goods and Services). As a result, use by the Applicant of the Opposed Mark in respect of the claimed goods and services in Australia, would be likely to deceive or cause confusion.

1. To satisfy s 60 the Opponent must establish that the trade mark upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.

2. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

   The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

   The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[13]

   [13] ibid, [20-21].

3. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F[14] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [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. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…[15]

   [14] [2000] FCA 1335, [81].

   [15] [1992] FCA 159, [118].

4. Justice Kenny also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[16]

   [16] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.

5. What constitutes a significant or substantial number of persons in the relevant market must be considered.[17] Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltee provided some guidance:

   What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.F12F[18]

   [17] Liburb 1, Exhibit ML-3.

   [18] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).

6. The Opponent submits that the Disputed Services are broad and would include within their scope education relating to, for example the training of retail staff, for which the Opponent enjoys a significant reputation.

7. The Opponent has used its BOSS trade marks in Australia since 1979 for clothing, 1998 for eyewear, 2002 for fragrances, 2006 for watches and 2010 for childrenswear. At the priority date the Opponent was operating approximately 36 BOSS or HUGO BOSS stores, shop-in-shops and outlets in Australia, with its first store opened in 1999. Additionally, a large number of BOSS products are offered for sale by third party retailers such as David Jones, Myers, Corporate Apparel Group and Mighty menswear.[19]

   [19] Daly [12] to [16].

8. The Opponent provides sales figures from 2017 to 2021,[20] and the Opponent’s extensive promotional activities are provided through various mediums including its website, social media, in store promotional events, and sponsorships.[21]

   [20] Daly [17].

   [21] Daily [25] to [60] Exhibits PD8 to PD-21.

9. In this case, the evidence demonstrates that the Opponent’s BOSS and HUGO BOSS trade marks have acquired a reputation in Australia amongst a significant number of consumers in relation to its clothing, footwear, headgear, eyewear, fragrances and watches and retail and wholesale services. This reputation however does not extend to the provision of the Disputed Services.

10. In regard to the likelihood of deception or confusion, while the services are not required to be similar, the evidence does not demonstrate that the Opponent has offered the Disputed Services in Australia, nor is it likely that the reputation the Opponent has in respect of retail and wholesale services would lead to consumer confusion in respect of the Disputed Services operating under a different trade mark. I am therefore not satisfied that there is a real tangible likelihood that consumers would be caused to wonder whether there is some connection between the Opponent’s BOSS and HUGO BOSS trade marks and the Trade Mark.

11. The Opponent has not established the ground of opposition under s 60.

Section 42(b)

1. Section 42(b) provides:

   42 Trade Mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   [ …]

   (b)  its use would be contrary to law.

1. In the SGP the Opponent particularises the s 42(b) ground of opposition as follows:

   The Opponent has, before the priority date of the Opposed Mark, acquired a reputation in the trade marks BOSS and HUGO BOSS applied to and in relation to the Opponent’s Goods and Services. As a result, use by the Applicant of the Opposed Mark in Australia would be contrary to law. In particular, use of the Opposed Mark by the Applicant in respect of the claimed goods and services would amount to misleading or deceptive conduct pursuant to sections 18 & 29 of the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act 2010).

1. As with all the grounds of opposition, the onus of proof rests with the Opponent and in that regard the case law on s 42(b) requires the Opponent to show that use of the Trade Mark in relation to the Disputed Services would be, rather than could or might be contrary to law.[22]

   [22] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

2. Section 18 of the Australian Consumer Law[23] (‘ACL’) is concerned with misleading or deceptive conduct, while s 29 of the ACL is concerned with false and misleading representations. Case law has made it plain that s 18 of the ACL imposes a more stringent test than that for deception or confusion under s 60.[24] I have found that the Opponent has failed to establish a ground of opposition under s 60 in relation to the Disputed Services. Consequently, I find that the Opponent has also failed to establish that use of the Trade Mark in relation to the Disputed Services would be contrary to s 18 of the ACL.

   [23] Competition and Consumer Act 2010 (Cth), sch 2.

   [24] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198. This case was decided under the superseded s 52 Trade Practices Act 1974 (Cth) (‘TPA’) the equivalent provision to the current s 18 of the ACL.

3. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[25] nor will it constitutepassing off.[26]

   [25] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered – in connection with the superseded TPA that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).’ Sections 53(c)-(d) of the TPA are the equivalent provisions to ss 29(1)(g)-(h) of the ACL.

   [26] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).

4. The Opponent has not established the ground of opposition under s 42(b).

Section 62A

1. Section 62A provides:

   62AApplication made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. In the SGP the Opponent particularises the s 62A ground of opposition as follows:

   At the time of making the application, the Applicant would or should have been aware of the Opponent’s prior use and reputation in the trade marks BOSS and HUGO BOSS and was or should have been aware of the pre-existing rights in the trade marks BOSS and HUGO BOSS.

   The adoption and subsequent filing of the Opposed Mark in circumstances in which the Applicant was or should have been aware of the reputation and prior rights in the trade marks BOSS and HUGO BOSS amounts to conduct that falls short of the acceptable standards of commercial behaviour.

1. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) provided some illustrations of applications made in bad faith:

   ·     persons who monitor new property developments, register the name of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

   ·     persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks; and

   ·     persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

2. These illustrations are not exhaustive. In DC Comics v Cheqout Pty Ltd (‘DC Comics’) Bennett J observed that all of the circumstances surrounding the application to register a trade mark are relevant.[27] Moreover, conduct after the priority date can be used to shed light on the Applicant’s subjective intent at the filing date.[28]

   [27] [2013] FCA 478, [62].

   [28] Ibid, [71].

3. The test for bad faith incorporates subjective and objective elements. That is, I must consider what the Applicant knew at the filing date, and then consider whether, armed with that knowledge its decision to file the Trade Mark would be considered to be in bad faith by persons who adopt proper standards of behaviour in business. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry’)[29] Dodds-Streeton J made the following comments, quoting from Harrisons’s Trade Mark Application:

   Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton “the Robin Hood test”. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

   … The words “bad faith” suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[30]

   [29] [2012] FCA 81.

   [30] Harrison’s Trade Mark Application [2004] EWCA Civ 1028.

1. Her Honour continued later in the same decision:

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand, or unconscientious character.[31]

   [31] Fry (n 7) [2012] FCA 81, [147], [165]-[166].

1. The Opponent submits that at the Relevant Date, the Applicant was aware of the Opponent’s BOSS and HUGO BOSS trade marks and its products because of the Opponent’s significant and longstanding reputation. The Opponent submits that the Applicant being so aware, is attempting to gain an unfair commercial advantage, taking advantage of the goodwill, reputation and success of the Opponent’s BOSS and HUGO BOSS trade marks.

2. The onus is on the Opponent to establish bad faith and it will not be easily given the serious nature of the allegation.[32] Turning to the factors raised by the Opponent, I note that without more, mere awareness of another trade mark does not constitute bad faith, nor has the Opponent provided clear and cogent evidence demonstrating that the Applicant created the Trade Mark to gain an unfair commercial advantage.

   [32]  Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

3. On balance, I find that the Opponent’s evidence does not point to any activity or actions taken by the Applicant that might be indicative of behaviour that is unscrupulous, underhanded or otherwise unconscientious in character. I am not satisfied that the filing of the Application in the circumstances existing at the Relevant Date was conduct that constitutes bad faith.

1. The Opponent has not the established the ground under s 62A.

Decision

1. Section 55 provides:

   55Decision

   (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.

2. The Opponent has established its opposition under s 44 to trade mark number 2175870 in relation to the Disputed Goods. None of the other grounds of opposition have been established. Therefore, I refuse to register the Trade Mark in relation to the following goods depicted in strikethrough:

   Class 9: Articles of clothing for protection against acids; Articles of clothing for protection against fire; Articles of clothing specifically adapted for protection against accident; Eyewear in relation to eye protection and eye safety in the field of trades; Sun visors (eyewear) in relation to eye protection and eye safety in the field of trades; Aerials for telecommunications; Apparatus for telecommunications engineering; Digital telecommunications instruments; Earth satellites for use in telecommunications; Insulated telecommunications cables; Mobile telecommunications apparatus; Telecommunications apparatus; Telecommunications devices; Telecommunications equipment; Telecommunications networks; Apparatus for conducting scientific experiments in satellites; Intercommunication satellites; Microwave antenna for the reception of satellite data; Satellite apparatus; Target surveillance apparatus (satellite); Target trackers (satellite); Transmitting apparatus for satellite broadcast; Education software; Computer data input devices; Computer databases; Data carriers; Data communications hardware; Data communications software; Data compilations; Data networks; Data processing devices; Data processing software; Databases; Databases (electronic publications); Electrical data input devices; Electronic data carriers; Electronic data files; Electronic data processing devices; Image data capture devices; Installations for data processing; Microchips for recording data; Microcircuit data carriers; Mobile data instruments; Real-time data processing apparatus; Cryptocurrency wallets; Cryptographic apparatus; Downloadable cryptographic keys for receiving and spending cryptocurrency; Firmware for small decentralised control systems; Scientific apparatus and instruments

   Class 25: Apparel (clothing, footwear, headgear) for safety and protection uniforms and workwear; Occupational clothing (other than for protection against accident or injury); Smart clothing (clothing which incorporates digital components); all for use only by business owners, tradespersons, cleaners, industrial workers, and occupational health and safety workers in the field of workwear

3. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.

Costs

1. Both parties sought an award of costs. Each party has had a measure of success in this matter, and I decline to make an award of costs against either party.

Louise Tuohy
Hearing Officer
Delegate of the Registrar of Trade Marks
17 May 2024