Global fashion brand Hugo Boss has successfully blocked trademark applications in both Australia and New Zealand by Singapore-based beauty business Limboss.
In both cases, it was found that the Limboss trademark could be misconstrued as being connected to the Hugo Boss trademark, which is depicted as ‘BOSS’ in a serif font. Limboss is also depicted in a very similar serif font, and is also capitalised.
Australian Trade Mark Office documents pertaining to the Australian case noted that confusion cannot arise solely from the reputation of one trade mark.
“There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be.
“The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.”
It was found that Hugo Boss has a reputation with its Boss trademark in Australia for fragrances - a category that Limboss also sells - and is likely to deceive or cause confusion.
A similar finding was revealed by the Intellectual Property Office of New Zealand.
“The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, although it has also been noted that when perceiving a verbal sign, the average consumer will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them.
“Because the word ‘LIMBOSS’ has no obvious meaning, I consider it more likely the average user would discern the known word ‘BOSS’ within the Mark.
“Conceptual similarity does not need to evince a shared origin of the brands. It may be enough to spark a connection in the minds of consumers.”
The office documents added that its purpose is to protect the public from deception and confusion.
“In this context it is also relevant that customers will be used to seeing the Opponent’s mark BOSS paired with a sub-brand, or used as part of HUGO BOSS.
“The relevant public would be aware the Opponent has a stable of brands including both HUGO BOSS and BOSS, which may be paired with other sub-brands.
“I consider there is, on the balance of probabilities, a sufficiently significant risk that the use of [Limboss trademark] on any of the Applicant’s Goods will spark a connection in the minds of consumers with the Opponent’s brands, and cause them to wonder whether they might come from a common source.”
Hugo Boss is a global brand with over 16,000 employees. In 2022, its full-year sales hit €3.6 billion (AU$6 billion). In the fourth quarter of 2023, the brand’s currency-adjusted group sales grew 13% to €1.1 billion (AU$1.8 billion).
Limboss operates a website and ships worldwide.