Hugo Boss lost an opposition against “BOSS SHOT” trademark in the EU

Hugo Boss lost an opposition against an application for European trademark BOSS SHOT for classes 30 (food flavorings) and 34 (electronic cigarettes).

Against this application, the company invoked earlier trademark for BOSS in classes 14 (precious metals jewelry, clocks, and watches) and 25 (clothing, belts, shawls, accessories, ties, gloves, and shoes).

Apart from this, Hugo Boss relied on a trademark with reputation of the territory of the EU.

The EUIPO concluded that both signs are similar at least to an average degree.

However, the goods in both cases were defined as completely different. The German company tried to explain that they are complimentary to some extent because, for example, jewelry and electronic cigarettes can be offered at one and the same stores. What’s more they can be part of the consumer’s lifestyle.

Unfortunately for the company, the Office disagreed. The goods are dissimilar by their nature, way of use and distribution channels.

When it comes to the stated reputation of the earlier mark, the EUIPO considered that it is not enough.

As it is well-known, you can rely of a trademark with reputation in order to prevent later identical or similar marks for dissimilar goods or services but only if:

• The signs must be either identical or similar,
• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based, and
• Risk of injury: registration of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the case at hand, the Office concluded that because their is no link between the goods, consumers will not make a connection between both signs and the earlier mark will not suffer injury at all.

It is highly possible this decision to be appealed. What is essential here is the fact that reputation of a trademark can extend its protection but this is not without some limits. Because of this every trademark owner should create more comprehensive strategy for protection of its trademark in an attempt to prevent such scenarios.

Source: IPKat.