German luxury fashion house Hugo Boss has failed in their attempt to stop the registration of a composite mark consisting of “BOSSWASH” and a spread-eagle device at the Japan Patent Office (JPO).
[Opposition case no. 2017-900382, Gazette issue date: October 25, 2019]
Opposed mark, filed in April 2017, consists of the literal element “BOSSWASH” and a spread-eagle in black with crown over its head, a letter “B” on its right wing and “W” on left wing (see below).
The application was for bags and pouches in class 18 and published for registration (TM Registration no. 5985092) by the JPO on October 24, 2017.
Opposition by Hugo Boss
To oppose against registration within a statutory period of two months counting from the publication date, HUGO BOSS Trademark Management GmbH & Co KG filed an opposition on December 20, 2017.
Hugo Boss’s opposition to stop the registration was based on claims that the “BOSSWASH” mark could be similar to or confused with sixteen of their earlier trademarks (#2190696, #3236870, IR746972, IR754225, IR773035, IR782587, IR827260, IR827261, IR831750, IR952458, IR964946, IR1023719, IR1055000, IR1058629, IR1072604, IR1263822), which prominently contain the term “BOSS”.
In the decision, the JPO found that, given the literal portion of opposed mark “BOSSWSH” shall be inseparable and perceived in its entirety, opposed mark and Hugo Boss’s trademarks were sufficiently distinguishable in visual, phonetic and conceptual points of view.
To my surprise, the Opposition Board of JPO admitted a high degree of popularity and reputation of “HUGH BOSS” as a trade name of opponent, however, it denied popularity of Hugo Boss’s trademarks, stating that produced materials are insufficient and non-objective to demonstrate substantial use and famousness of the cited marks.
Based on the foregoing, the JPO concluded it is unlikely that consumers confuse or misconceive a source of the opposed mark with Hugo Boss and dismissed the opposition totally.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM