Partial success for Hugo Boss in TM opposition at UKIPO
Hugo Boss yesterday enjoyed a partial victory in trademark opposition proceedings in the UK.
George Salthouse of the UK Intellectual Property Office (IPO) upheld the fashion brand’s opposition to the applied-for mark ‘UFBOSS’ for use in relation to glasses, smartwatches, and laptop/phone cases, but not in relation to technological products such as computers and keyboards.
Shenzhen Yongfulong Technology Company applied to register the disputed mark in class 9 in April last year. Since 2008, the Chinese company has been developing its UFBOSS range, which includes technology-related accessories, according to its website.
Hugo Boss filed an opposition to the mark’s registration, on the grounds that the ‘UFBOSS’ mark is similar to Hugo Boss’s earlier-registered marks.
The opposition centred on the ‘UFBOSS’ mark in relation to smartwatches, glasses, and laptop/phone cases. But Hugo Boss also claimed that any use of the mark would take unfair advantage of the brand’s “considerable reputation in the UK”.
Hugo Boss relied on its earlier-registered EU marks, such as ‘BOSS’ (number 49,221), in its opposition. ‘BOSS’ was filed in 1996, and is registered in class 9 for glasses, 14 for watches, and 18 for small leather goods.
In response, Shenzhen said that the ‘UF’ in the applied-for mark stands for ‘Yongfulong’ in “short pronunciation”. The company also noted that its electronic goods are different to products offered by Hugo Boss in the clothing industry.
Salthouse said that UK consumers will not recognise ‘UF’ as relating to ‘Yongfulong’, and confirmed that there is “considerable visual, aural, and conceptual similarity” between the applied-for mark and the ‘BOSS’ mark.
Consumers are likely to be “confused into believing” that the glasses, watches, and laptop/phone cases offered by Shenzhen are somehow linked to Hugo Boss, Salthouse said.
However, he added that the applied-for mark is only slightly similar to another of Hugo Boss’s asserted marks, ‘HUGO BOSS’ (number 49,254). There is no likelihood of confusion between the applied-for mark and this mark, Salthouse determined.
He agreed with Shenzhen that the electronic goods such as computers and keyboards are “so far removed” from Hugo Boss’s clothing products that there is “no prospect of any consumer forming a link between the marks of the two parties”.
Salthouse added that Hugo Boss had failed to provide evidence of reputation and goodwill in the UK in the relevant period, so the fashion brand’s attempt to prevent the registration of ‘UFBOSS’ in relation to any goods at all must be rejected.
As “both sides have achieved a measure of success”, Salthouse declined to favour either side with an award of costs.
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