On February 27, 2025, Taiwan’s IP Office (“TIPO”) ruled in the favor of HUGO BOSS AG (“HUGO BOSS”), canceling the contested trademark “USHIO BOSS & device” after finding such trademark may cause confusion with the well-known brand “BOSS” and “HUGO BOSS” (See below).
1.
Article 30.1.10 of Trademark
Act provides that a mark shall not be registered if such a mark is identical
with or similar to another person’s registered trademark or earlier filed
trademark and to be applied for goods or services identical with or similar to
those for which the registered trademark is protected or the earlier filed
trademark is designated, and hence there exists a likelihood of confusion on
relevant consumers.
2.
On similarity, TIPO noted that
in HUGO BOSS’s cited trademarks, the dominant portion is obviously “BOSS” and “HUGO
BOSS”. As to YU CHEN’s contested trademark, “USHIO” and “BOSS” are the portions
that would raise consumer’s attention. To this end, TIPO found that YU CHEN’s
contested trademark, similarly, features the letter “BOSS”, and that the “USHIO”
in Yu CHEN’s contested trademark also bears some degree of similarity with “HUGO”,
since both include letters of “H”, “U”, and “O”. As such, there is visual,
conceptual, and verbal similarity between YU CHEN’s and HUGO BOSS’s trademarks.
3.
On the designated goods, the
contested trademark was applied for use in various kinds of belts and
suspenders, which are similar or related to the products designated by HUGO
BOSS’s trademarks, which cover clothing, shirts, belts, shawl, sash, etc.
4.
Moreover, based on the records
submitted by HUGO BOSS, both its “BOSS” and “HUGO BOSS” trademarks have been
recognized as well-known by TIPO, and have established strong brand recognition
among the relevant consumers. Taiwan’s consumers would be more familiar with
HUGO BOSS’s trademarks than with the contested trademark.
5.
Although YU CHEN argued that
its previous trademarks have co-existed with HUGO BOSS’s trademarks for many
years, TIPO nonetheless found those trademarks cited by YU CHEN actually
feature one single word “USHIOBOSS”, not “USHIO” and “BOSS”, which were somehow
dissimilar to the contested trademark. Besides, these trademarks have long expired
and were no longer in use. As such, the mere facts that YU CHEN once registered
“USHIOBOSS” were insufficient to prove the contested trademark could co-exist
with HUGO BOSS’s trademarks without causing confusion.
6.
In view of the above, given the
similarity between “USHIO BOSS” and “HUGO BOSS”, the relatedness of designated
products, and the fact that “HUGO BOSS” and “BOSS” are well-known trademarks
with which consumers are more familiar, TIPO ruled that the registration of the
contested trademark may cause confusion with HUGO BOSS’s cited trademarks.
Hence, the contested trademark was canceled accordingly.
Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4a0tVKzJ6dmVXWkM2a1plMlBIcGdTUT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true
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