Taiwan’s IP Office found no confusion between “水頭家WATER BOSS” and “BOSS”

On September 30, 2021, Taiwan’s IP Office (“TIPO”) denied trademark opposition filed by HUGO BOSS TRADE MARK MANAGEMENT GMBH & CO. KG (“HUGO”), finding registration of “水頭家WATER BOSS” would not cause confusion with HUGO’s famous “BOSS” and “HUGO BOSS” trademarks (see below).

 

In its opposition filed on May 14, 2020, HUGO argued that its “BOSS” and “HUGO BOSS” trademarks, such as No. 00174072, 00279546, 00414384, 00173436, 01552958, and 01965218, have become well-known in apparel, watches, glasses, perfume, and luxury products after years of its successful and continuous marketing and sales.

Such high degree of distinctiveness and fame might be confused or diluted by the registration of “水頭家WATER BOSS” (Reg. No. 02042268, see below), because, according to HUGO, the contested trademark also features the same word “BOSS”, and is applied for use in associated services under class 35, including agency service for import or export, advertising, retail service for beverage, rental service for vendor machine, etc.

However, TIPO does not side with HUGO:

1.     HUGO contends that registration of “水頭家WATER BOSS” would violate Article 30.1.11 of Trademark Act, which provides that: “A trademark shall not be registered if such a mark is identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark.” For Article 30.1.11 to be applicable, there must be similarity between the cited well-known trademark and the contested trademark.

2.     Here, although it is well established that HUGO’s cited trademarks, “BOSS” and “HUGO BOSS”, are well-known, TIPO finds the contested trademark “水頭家WATER BOSS” is dissimilar. While it is true that both trademarks contain the word “BOSS”, the contested trademark further present additional elements, including “water” and the Chinese characters “水頭家”, which denotes “boss of water”. As such, TIPO is of the view that the contested trademark is distinctive when being used for service under class 35 (e.g., agency service for import or export, advertising, etc.), and ordinary consumers would find “水頭家WATER BOSS”, in its entirety, different from HUGO’s famous trademarks.

3.     HUGO argues that when seeing the contested trademark, consumers would focus on the word “BOSS” only, because such word is already famous. TIPO disagrees. TIPO finds “水頭家WATER BOSS” as a whole distinctive, and thus consumers would view the contested trademark in its entirety, rather than particularly focus on the word “BOSS”.

4.     Based on the above reasons, since the similarity between the two trademarks is low, TIPO determines that it is less likely for consumers to confuse “水頭家WATER BOSS” with HUGO’s famous “BOSS” or “HUGO BOSS” trademarks. HUGO’s opposition is therefore denied.

 

Source:

https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4MktqL1VsT3ovTk9QdzhYT1llR1lVZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true