The extended but not unlimited protection of trade marks with a repute: Hugo Boss loses battle against ‘BOSS SHOT’ due to the difference between goods at issue

In an decision delivered earlier this month concerning an opposition filed by Hugo Boss, which owns the mark 'BOSS', the EUIPO Second Board of Appeal acknowledged that – despite the similarity of the marks in question – the required ‘link’ under Article 8(5) of the EU Trade Mark Regulation (EUTMR) was not established due to the difference between the goods at issue.

Background

With an application filed in August 2017, the Applicant Boss Shot sought to register 'BOSS SHOT' as an EU trade mark (EUTM). Registration was sought for goods in Classes 30 (food flavorings) and 34 (electronic cigarettes) of the Nice Classification.

Hugo Boss opposed the application under Article 8(5) EUTMR claiming that its own earlier EUTM 'BOSS' enjoys considerable reputation in the EU, and that the Applicant’s sign conflicted with its own EUTM designating Classes 14 (precious metals jewellery, clocks, and watches) and 25 (clothing, belts, shawls, accessories, ties, gloves, and shoes).

In April 2019, the Opposition Division rejected the opposition by considering that – notwithstanding the similarity of the signs – the designated goods under the mark applied for are so different that the mark is unlikely to bring the earlier mark to the mind of the relevant public.

Hugo Boss appealed.

Parties’ arguments

Hugo Boss submitted that, besides the inherent similarity between the signs, the goods in question also share a degree of similarity since the fashion and accessory sectors overlap. For instance, it is not uncommon that certain jewelry stores sell costume jewelry as well as electronic cigarettes.

Furthermore, since ‘BOSS’ is well-known in the EU for the relevant goods, the Applicant’s mark would take unfair advantage of or be detrimental to the reputation of the opponent’s mark. The use of the mark would create a link in the average consumer's mind because of the similarity of the goods and the overlapping concepts of lifestyle and taste.

In response, the Applicant submitted that, not only are the goods dissimilar, but are neither complementary nor in competition with one another. They have completely different methods of use and distribution channels. A consumer searching for e-cigarettes, when faced with a mark with a reputation for clothing and jewellery, will not make the required link necessary to succeed under Article 8(5) EUTMR because the goods are completely different.

The decision

Earlier trade marks with a reputation in a Member State enjoy extended protection in accordance with Article 8(5) EUTMR. The Second Board of Appeal started its analysis by considering this provision, which sets out three requirements:

• 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.

Case law (T-67/04, Spa-Finders) has clarified that the requirements above are cumulative.

Relevant public

As far as the relevant public is concerned, this comprises the reasonably well informed consumers which will pay a higher degree of attention on account of the brand loyalty normally involved for tobacco goods (T-34/04, Turkish Power). The Opponent’s goods are directed at the public at large, whose level of attention is deemed to be average. The relevant public is that based across the EU territory.

Comparison of the signs

Following a comparison of the visual, aural, and conceptual similarities between the signs, the Board concluded that the signs are similar overall, at least to an average degree.

Reputation of the earlier mark

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

The evidence must show that reputation has been acquired for all the relevant goods and services. In the case at hand, Hugo Boss was able to demonstrate – by means of sales figures, marketing expenditure, and independent sources such as various surveys, studies and sponsorships – that its mark enjoys a high degree of recognition amongst the relevant public in Germany and in the EU for certain goods in Class 25. Whilst the Board found that reputation had been demonstrated for certain goods in Class 16, the same would not be true for services in Class 41.

The 'link’ between the signs

In order to determine the existence of a risk of injury, it is necessary to demonstrate that the relevant public will establish a link between the signs. The necessity of a ‘link’ is not explicitly mentioned in Article 8(5) EUTMR but has been established through case law, notably in C-408/01, Adidas and C-252/07, Intel.

On the basis of the evidence submitted by the parties, the Board found that the contested goods have different natures, purposes, methods of use, origins, and distribution channels. Overall, electronic cigarettes are so distant from clothing that it is implausible that the public would be reminded of the earlier mark when purchasing the contested goods.

The same applies to the contested ‘food flavourings’ in Class 30. They are equally dissimilar to the opponent’s clothing. Consumers will not expect that there is any relationship between ‘food flavourings’ producers and the opponent’s company offering clothing.

Where, as in the present case, a link between the conflicting marks used in relation with the relevant goods and services cannot be established, the goodwill of the earlier mark, also in economic terms, is not affected, or at least not protected under Article 8(5) EUTMR.

Unfair advantage of distinctive character or repute of the earlier trade mark

In the absence of a ‘link’, it was considered inconceivable that use of the contested trade mark for those goods and services would take unfair advantage of the distinctive character or repute which the earlier trade mark.

Comment

The decision is interesting from a number of perspectives, the principal one being that it sheds light on and provides further guidance in relation to the ‘risk of injury’ criteria. In this sense, it cements the fact that a ‘link’ is a required condition, lacking which Article 8(5) EUTMR cannot apply. As the General Court had established in T-111/16, Prada v EUIPO, a well-known trade mark (as 'PRADA' and 'BOSS' are) enjoys extended protection, but no protection is available when the latter’s sign fails to establish a link with it (as it was for 'THE RICH PRADA' and hotel services in that case, and 'BOSS SHOT' and the goods mentioned above here). In other words: the extended protection of well-known trade marks is not without limits.