I love Joe Lycett. His dry wit never fails to disappoint. In particular, his stories about: tracking down a lost cat who answers to the name Samantha Peterson; writing a letter of complaint challenging a parking fine; and scamming a Gumtree scammer, are gold. All on YouTube. You go watch them, I’ll wait.
What’s in a name?
He’s funny, right? So, most recently, he made a name for himself (pun intended) by legally changing his name from JOE LYCETT to HUGO BOSS after a trade mark application filed by Boss Brewing Company Ltd (a small craft brewery based in Swansea) was opposed by Hugo Boss (the German fashion house).
To avoid confusion, hereafter I will refer to the British comedian as ‘Hugo Boss’ and I will refer to the German fashion house as the ‘Other Hugo Boss’.
David vs Goliath
Hugo Boss’s outrage was apparently sparked when he learned that Boss Brewing had spent £10,000 in legal fees trying to defend their business and brand and had ultimately been forced to rebrand and change their labels. His view was that no one would ever confuse the products sold by Boss Brewing (mainly, beers) with the products sold by the Other Hugo Boss (mainly, clothing, bags, jewellery and fragrances).
In the end, having observed that the Other Hugo Boss REALLY don’t like it when people use anything even remotely resembling their brand name (they had apparently mounted a number of similar challenges previously against smaller businesses), he decided to change his name from JOE LYCETT to HUGO BOSS by deed poll and send a message to the Other Hugo Boss that there are limits to the monopoly control afforded by a registered trade mark. He Tweeted:
“It’s clear that @HUGOBOSS HATES people using their name. Unfortunately for them this week I legally changed my name by deed poll and I am now officially known as Hugo Boss. All future statements from me are not from Joe Lycett but Hugo Boss. Enjoy.”
Trade marks have limits
The main limitations on the control afforded by a registered trade mark are set out in section 11 of the Trade Marks Act 1994 and they are:
- The ‘own name’ defence: A registered trade mark cannot be used to prevent an individual using their own name or address (this is the section of the 1994 Act that prevents the Other Hugo Boss from challenging Hugo Boss’s use of his own new name).
- The ‘descriptive use’ defence: A registered trade a mark cannot be used to prevent people from using descriptive terms (e.g. terms that relate to the characteristics of a product or its geographical origin).
- The ‘referential use’ defence. A registered trade mark cannot be used to prevent people from referring to products bearing that trade mark (e.g. if I buy a Hugo Boss suit and decided to re-sell it on eBay, I would be entitled to use the words HUGO BOSS on my eBay listing because I am using the trade mark to refer to a product that bears that trade mark).
However, these defences are subject to an overarching requirement on the part of the person asserting them to show that their use of the trade mark is “in accordance with honest practices in industrial or commercial matters.” There are a number of factors that the courts consider when deciding whether the use of someone else’s trade mark on the basis of one of these defences is in accordance with honest practices. But in this case, the Other Hugo Boss could theoretically mount another challenge if, for example, it decided that Hugo Boss’s use of the trade mark was causing customer confusion or was detrimental to the distinctive character or reputation of the trade mark.
There are a few take-away points from the HUGO BOSS saga:
First, think outside the box. Briffa advises clients of all shapes and sizes, from start-ups to household names. We have sent and received countless cease and desist letter and notices of opposition. But we always advise our clients, not just on the legal implications, but on the commercial and potentially reputational implications of their actions. Where an opportunity to oppose a trade mark arises (especially where the marks are not THAT similar and the real-world likelihood of confusion is actually relatively low), sometimes the most sensible course of action is not to pursue a full-blown opposition but to negotiate a coexistence arrangement allowing both parties to continue to trade (whilst agreeing terms that will avoid customer confusion, such as how both businesses will present their brands on the market) and allowing both parties to avoid the wasted cost and time associated with unnecessary legal proceedings.
Second, be aware of the limits. Trade marks are powerful assets and Briffa advises every new business it meets to protect itself by thinking about its brand identity as soon as possible and securing trade mark protection for its various brand assets as soon as possible. But it is also important to understand the limits of trade mark protection. Trade marks generally cannot be registered if they are descriptive or non-distinctive in relation to the goods or services that the business sells. Similarly, trade marks cannot be enforced if the use complained about is descriptive use, referential use, use by a person of their own name or address, if the trade mark rights are exhausted, or if the trade mark has not be used for a very long time.
Third, if someone rattles your cage, take legal advice ASAP. Boss Brewing is just one of 1000s of small companies who have received a letter from a bigger company telling them to do this or that because they are infringing this right or that one. If your business receives such a letter, pick up the phone and speak to a Briffa lawyer as soon as possible. We give free consultations to all new clients who need help and we do this stuff every day so we’re pretty good at it. In most cases, there is some solution or workable angle and often the situation isn’t as dire as it may first appear. And if all else fails, we’ll try to get Hugo Boss involved!
If you would like a free consultation with one of our specialist intellectual property lawyers, contact us on 020 7288 6003 or [email protected].
Written by Éamon Chawke, Solicitor