A small Welsh brewery received a cease-and-desist letter from the fashion giant Hugo Boss after applying to register the trade marks for the names of its award-winning beers (Boss Black, a 5% ABV stout, and Boss Boss, a 7.4% ABV double IPA).
It should have taken Boss Brewing a few hundred pounds to register the trade marks, however, they ended up spending nearly £10,000 on several month long legal battle with Hugo Boss. The clothing giant’s trade marks BOSS and HUGO BOSS cover various classes of goods and services, including non-alcoholic drinks, but not beers. Nevertheless, the fashion mogul was adamant they wanted to ‘avoid potential misunderstanding regarding the brands.’
After months of negotiations, it was agreed that the names of the beers would have to change. Boss Black has become Boss Brewing Black and Boss Boss is now Bossy Bossy. The brewery also cannot sell its clothing, including hats and t-shirts.
Hugo Boss has previously made a complaint against a charity DarkGirlBoss, so it is not the first time it was trying to stop small businesses from using the word ‘boss’ in their branding.
The brewery owners are completely devastated and admitted that they would have rather spent the money ‘wasted in legal fees’ on a new bottling line that they have been developing.
There are a few points to be taken away:
Firstly, The Hugo Boss brand is enormously valuable, and it is protected by trade marks. Businesses wishing to protect the value in their brands should appreciate the importance of claiming trade mark protection as early as possible in the life of the business.
Secondly, It might be tempting for businesses to choose a name similar to the successful brand, but it is important to be aware that there are a range of avenues open to trade mark owners when their brand has been imitated by a third party, which potentially include trade mark infringement, passing off, unfair competition, copyright infringement and design right infringement. In such circumstances, the business need to weigh up the advantage achieved by imitating the successful brand and potential costs of defending a claim and being forced to change the name and branding.
Briffa are experts in all aspects of trade mark law and practice. Getting legal advice on the brand name will allow you to reduce the risk of wasting thousands in legal fees on defending the trade mark oppositions and then re-branding and instead invest it in your business.
If you would like to discuss how best to obtain protection for your brand please do not hesitate to get in touch with us on firstname.lastname@example.org or 020 72886003 and one of our specialist IP lawyers will be happy to have a consultation with you without charge.
Written by Anastasia Troshkova, Solicitor