No confusion as to origin between marks owned by Hugo Boss and Suntory

The registrar of trademarks recently rejected the oppositions filed by Hugo Boss AG on 25th November 1994 against two applications by Suntory Kabushiki Kaisha to register the mark BOSS in respect of Classes 29 and 30 (Applications 199214593 and 199214592, filed on 14th August 1992). The oppositions were determined by the registrar in accordance with the provisions of the repealed Trademarks Ordinance (Cap 43).

Hugo Boss claimed to be the owner of, among others, the trademarks BOSS and HUGO BOSS, and the design mark BOSS HUGO BOSS. It commenced use of the marks in Hong Kong in 1972. However, there is no Class 29 or Class 30 registration for the Hugo Boss marks in Hong Kong.

Hugo Boss argued that Suntory’s mark is identical to its BOSS mark and should not be registered under Section 12(1) of the ordinance, which provides that:

“it shall not be lawful to register as a trademark or part of a trademark any matter, the use of which would be likely to deceive or would be disentitled to protection in a court of justice or would be contrary to law or morality, or any scandalous design.”

Before invoking Section 12(1), an opponent must establish a certain degree of reputation for its mark in Hong Kong. The necessary degree ranges from the number of people in the particular market who recognize the mark, at its lowest point, to a substantial proportion of the interested public being aware of the opponent’s mark, at its highest point. In any event, the reputation in the opponent’s mark must be more than de minimis before Section 12(1) comes into play.

After considering Hugo Boss’s evidence, the registrar was satisfied that Hugo Boss had, through advertising activities, established a reputation in the design mark BOSS HUGO BOSS in respect of men’s clothing in Hong Kong prior to the filing date of Suntory’s applications. Despite the fact that the relevant reputation was unrelated to goods in Classes 29 and 30, the registrar was satisfied that the reputation in the design mark BOSS HUGO BOSS was sufficient for Hugo Boss to mount an opposition under Section 12(1). The onus then shifted to Suntory to convince the registrar that its use of the mark BOSS was not likely to cause confusion among a substantial part of the public.

Suntory’s BOSS mark was considered to be similar to Hugo Boss’s design mark BOSS HUGO BOSS. However, the registrar held that there is no real tangible danger that the purchasing public would be confused into believing that the goods of Hugo Boss and Suntory came from the same source, as the goods of both parties are very different and there was no evidence to indicate that there would be a perception of association between the goods. The registrar stated that when substituting himself as a potential purchaser, he would not be confused into believing that the goods of Hugo Boss and Suntory came from the same source. Therefore, Hugo Boss’s opposition based on Section 12(1) failed.

Under Section 13(2) of the ordinance, the registrar may exercise his discretion to refuse a registration application when an opposition based on Section 12(1) fails. However, Hugo Boss’s opposition contained no specific reasons to justify the registrar exercising his discretion to turn down Suntory’s applications.