German luxury fashion house Hugo Boss failed in their attempt to block Japanese TM Reg no. 6218609 for word mark “BOSS” on SaaS and order processing services.
[Opposition case no. 2020-900096, Gazette issued date: August 27, 2021]
Opposed mark, filed on January 22, 2019, by Rakuten, Japanese electronic commerce and online retailing company, consists of the word “BOSS” in standard character (see below).
The services sought for registration are order processing services in class 35 and providing computer programs on e-commerce, software as a service (SaaS), and other related services in class 42. Rakuten is using the opposed mark “BOSS” as an abbreviation of ‘Back Office Support System’ to indicate their service for sales order management and automated shipping system.
The JPO admitted registration on June 22, 2020, and published for post-grant opposition on February 12, 2020.
Opposition by Hugo Boss
HUGO BOSS Trademark Management GmbH & Co KG filed an opposition against the opposed mark on April 3, 2020, and claimed the opposed mark “BOSS” shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law.
Article 4(1)(xi) is a provision to prohibit registering a junior mark that is identical with, or similar to, any senior registered mark.
Article 4(1)(xv) is a provision to prohibit registration of a trademark which is likely to cause confusion with the business of other entities.
HUGO BOSS argued that not only tradename “HOGO BOSS but also their mark “BOSS” has been well known for a luxury fashion brand and source indicators of the opponent by producing Deloitte’s annual list of the world’s largest luxury companies on which HUGO BOSS was ranked No.19(2015), No.21(2016), No.23(2017).
In view of a high degree of similarity between the opposed mark and the opponent’s mark “BOSS” (see below), relevant consumers are likely to confuse the source of services bearing the opposed mark with HUGO BOSS.
The JPO Opposition Board admitted a certain degree of the reputation of the “HUGO BOSS” mark as a source indicator of the opponent in connection with fashion items, e.g., clothing, watches, sunglasses, fragrances.
In the meantime, the Board questioned if the word “BOSS” has also acquired such popularity, stating that produced materials are insufficient to find the word perse plays the source indicator since the cited mark contains a famous mark “HUGO BOSS” adjacent to it.
Even if there is a high degree of similarity between the marks, the Board has a reasonable ground to believe the services in question, namely, order processing services (cl.35) and SaaS (cl.42) are less associated with fashion items, e.g., clothing, watches, sunglasses, fragrances.
If so, it is unlikely that relevant consumers at the sight of the opposed mark would conceive or associate it with HUGO BOSS or any entity who is systematically or economically connected with the opponent when used on the services in question.
Based on the foregoing, the JPO dismiss the entire allegations of HUGO BOSS and allowed the opposed mark “BOSS” to survive.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM