On April 16, 2020, HUGO BOSS TRADE MARK MANAGEMENT GMBH & Co. KG (“HBTM”) filed trademark opposition against trademark “DOSS”, alleging the registration of “DOSS” would cause confusion with its famous “BOSS” trademarks (Reg. No. 419774, 1063553, 1552959, and 412330, see below).
The contested trademark, “DOSS” (Reg. No. 02037593, see below), was filed on July 19, 2019, and granted on January 16, 2020. “DOSS” was applied for use in goods under class 9, 14, 18, and 25. For goods under class 14, “DOSS” was designated for use in products like bracelet, jewelry box, watches, electronic watches, and clocks; for goods under class 18, “DOSS” was designated for use in bags, wallet, handbags, sports bags, suitcases, and backpacks; for goods under class 25, “DOSS” was designated for use in scarfs, headscarf, tie, hat, and belt.
HBTM contended that the registration of “DOSS” for goods under class 14, 28, and 25 at least violated Article 30.1.10 of Trademark Law, which prescribes that “a mark shall not be registered if such a mark is identical to or similar with other’s senior trademark and applied for use in identical or similar products or services, hence there exists likelihood of confusion among the relevant public.”
Taiwan’s IP Office (“TIPO”) sided with HBTM on July 29, 2021:
1. Registrant of “DOSS” argues that there is significant difference because the first letter of “DOSS” is “D”, which is different from that of “BOSS”. Besides, the second letter “O” presented in “DOSS” is particularly stylized. However, TIPO finds these are minor differences, and opines that in its entirety “DOSS” still demonstrates similar visual impression with “BOSS”. Further, the pronunciation of “DOSS” and “BOSS” is also similar. TIPO therefore considers “DOSS” possess medium degree of similarity with “BOSS”.
2. With regard to the designated products, TIPO notes that the asserted “BOSS” trademarks are also applied for use in similar or associated products, such as ring, tie, necklace, jewelry box, handbags, wallets, suitcase, belt, tie, belt, briefcase, etc. Thus, TIPO finds “BOSS” and “DOSS” both are applied for use in similar products, and the degree of similarity is high.
3. Moreover, TIPO affirms that based on the submitted marketing materials, court decisions, and sales records, prior to the filing date of “DOSS”, HBTM’s “BOSS” trademarks have already become well-known in Taiwan, with greater familiarity and recognizability among the relevant consumers. To the contrary, the evidence of use of the “DOSS” trademark is limited to products such as Bluetooth earbuds, which is not the product class 14, 18, or 25. Thus, TIPO concludes that consumers should be more familiar with “BOSS” in the product field of class 14, 18, and 25.
4. In view of the above, since “DOSS” is visually and verbally similar with “BOSS”, applied for use in similar goods under class 14, 18, and 25, and consumers are more familiar with “BOSS” due to HBTM’s continuous marketing and use in the local market, TIPO determines that “DOSS” is confusingly similar with “BOSS” per Article 30.1.10 of Trademark Law. Therefore, TIPO rules that the registration of “DOSS” should be cancelled accordingly.
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