Hugo Boss lost a trademark dispute against Rakuten in Japan

Masaki Mikami informs us for yet another interesting trademark dispute from Japan.

In the case at hand, the Japanese e-trade company Rakuten filed an application for word trademark BOSS in classes 35 and 42 – providing computer programs on e-commerce, software as a service (SaaS), and other related services.

BOSS in this case is abbreviation from the service ‘Back Office Support System’ offered by Rakuten.

Against this application an opposition was filed by the German company HUGO BOSS Trademark Management GmbH & Co KG, based on an earlier mark HUGO BOSS for which an acquired reputation was claimed.

The German company filed evidence for its reputation including Deloitte’s annual list of the world’s largest luxury companies where HUGO BOSS is No.19 in 2015.

The Patent Office agreed that Hugo Boss has a reputation in Japan but disagreed that this is true for the part BOSS alone taking into account that the earlier mark is used as HUGO BOSS.

However, the Office concluded that even in case both signs are considered similar the respected goods and services are not. The processing services in classes 35 and 42 are not directly associated with clothes, perfumes, jewelry etc., which Hugo Boss is famous for.

From that point of view the Office dismissed the opposition finding highly unlikely consumers to be confused or deceived from the existence of both marks in the market.


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