HUGO BOSS, the trademark of the German luxury brand, has been very successful in building its worldwide fame and reputation on various kinds of fashion products. In Taiwan, it is not only a luxury brand, but also a well-known registered trademark that has been recognized by Taiwan’s IP Office (TIPO), especially for the products of perfume, clothing, and the relevant accessories.
On September 12, 2019, HUGO BOSS Trademark Management GMBH & CO. KG (“HBTM”), the registrant of series of “HUGO BOSS” trademarks in Taiwan (Reg. No. 467585, 918669, 1086540, 1518580, and 1642229, see below), filed opposition against the registration of “LUCA BOSSI”, arguing that the registration of the opposed trademark would violate Article 30.1.10, and 30.1.11 of Trademark Act.
The opposed trademark, “LUCA BOSSI”, featuring a combination of word “LUCA BOSSI” and an icon of shield, was filed on September 4, 2018, and granted on June 16, 2019 (Reg. No. 01991696, see below).
TIPO did not find in HBTM’s favor. In its decision entered on March 23, 2021, TIPO determined that the registration of “LUCA BOSSI” would not cause confusion among the relevant public, even though HBTM’s cited “HUGO BOSS” trademarks are well-known in Taiwan.
TIPO agreed with HBTM that its opposing trademarks, i.e., the cited “HUGO BOSS” trademarks series, have become well-known in the relevant consumers, particularly among the products of apparel, perfume, and the relevant accessories. However, to be subject to Article 30.1.10 and 30.1.11 of Trademark Act, there must be similarity between “HUGO BOSS” and “LUCA BOSSI”, and that such similarity would cause confusion among the relevant public.
1. Here, TIPO found “LUCA BOSSI”, although also displaying the word “BOSSI”, is not similar with HBTM’s cited trademarks in its entirety. TIPO also noted that “BOSS” is a common word and has already been used and registered by numerous co-existing trademarks, such as “SHOE BOSS” (Reg. No. 923941), “KLIN-BOSS” (Reg. No. 969198), “Shining Boss” (Reg. No. 01680678), “BOSSI” (Reg. NO. 01950160), and “Boss&Juice” (Reg. No. 1086923). Thus, consumers are very familiar with “BOSS”, and would be less likely to use “BOSS” to identify the source of certain goods or services. When seeing “LUCA BOSSI” in its entirety, TIPO found it visually, conceptually, and verbally different from HBTM’s “HUGO BOSS”. Hence, TIPO held the view that consumers would not be confused simply because “BOSSI” is shown in the opposed trademark.
2. As to the designated use of goods, “LUCA BOSSI” was applied for use in goods for class 3, such as air fragrances, and the cited trademarks were applied for use in, among the other, cosmetics, perfume, shampoo, body wash, and soap. TIPO found the purpose, function, and sales channel of goods designated by the two trademarks are obviously not the same or related.
3. TIPO further noted that “LUCA BOSSI” is also distinctive. “LUCA BOSSI” is not common word with ordinary meaning , and has no relation with the nature or function of its designated goods (i.e., air fragrance). Thus, it is likely that consumers may distinguish “LUCA BOSSI” from “HUGO BOSS”.
In view of the above, since the similarity between “HUGO BOSS” and “LUCA BOSSI” is low, the products that “HUGO BOSS” and “LUCA BOSSI” are applied for use are different in nature, and there is no evidence of actual confusion, TIPO concluded that there would be no confusion caused by the registration of “LUCA BOSSI”. Accordingly, HBTM’s opposition was denied.
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