A British comedian is not amused with Hugo Boss’ penchant for aggressively policing unauthorized uses of its trademark-protected “Boss” name. In response to what he characterizes as the multi-billion dollar German fashion brand’s pattern of sending “cease and desist letters to a number of small businesses and charities who use the word ‘BOSS’ or similar … costing them thousands in legal fees and rebranding,” Joe Lycett has legally changed his name to Hugo Boss.
Sharing a signed “deed pool,” the formal documentation that reflects a legal name change in the United Kingdom, on social media over the weekend, 31-year old Lycett stated, “It’s clear that Hugo Boss 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.” He followed up the initial announcement by asserting that he “will be launching a brand new product as Hugo Boss,” which he says will be revealed as part of his part-comedy, part-consumer education television show, Joe Lycett’s Got Your Back.
In furtherance of the trademark-centric stunt, Lycett pointed to a recent back-and-forth between the nearly 100-year old Metzingen, Germany-headquartered fashion brand and Boss Brewing, which erupted after the small Welsh brewery filed to register the names of two of its best-selling beers with the United Kingdom Intellectual Property Office (“UKIPO”), only to face pushback from the brand. In a cease and desist letter that it sent to the brewery, and in its formal opposition filings with the UKIPO, Hugo Boss asserted that the names of the company’s Boss Black and Boss Boss beers were likely to cause confusion among consumers as to the source of the products or Hugo Boss’ affiliation with them, particularly since the brewery also made and sold branded merch.
As such, Hugo Boss argued that the marks were not only ineligible for trademark registration but the names should be changed entirely.
While 6-year old Boss Brewing defended its use of the beer names and the corresponding trademark applications for registration, which it filed in October 2018, arguing that Hugo Boss “has the Boss trademark in most areas, but [does] not have it in alcohol,” the parties ultimately settled the matter, with Boss Brewing agreeing to alter the names of the beers at issue and retain from making and selling apparel.
Speaking to Wales Online this summer, Boss Brewing co-owner Sarah John said that the company had paid almost £10,000 in legal fees during the four-month fight with Hugo Boss and would incur further costs due to the fact that they were “going to have to go through and change the labels of [the allegedly infringing beers],” which she said would “be of great expense and time for a small brewery.”
The trademark squabble between the two companies made headlines, in large part due to the striking difference in size between them, but, in reality, it is hardly a novel occurrence. Instead, it is part of a well-established pattern of large brands taking on unauthorized uses of their names on trademark infringement and dilution grounds.
Early this year, for instance, Tiffany & Co. prevailed in a fight against a small British beauty company called Cotswold Lashes by Tiffany. The New York-based jewelry giant filed an opposition to a then-pending trademark application for “Cotswold Lashes by Tiffany,” asserting that the unrelated company’s mark is “very similar” to its own UK and European Union-registered trademarks for “Tiffany & Co.” and “Tiffany,” and at least some of the parties’ goods/services overlap. With that in mind, Tiffany & Co. asserted that the mark – if registered – “would take unfair advantage of [its] marks” and would “dilute the distinctiveness” of its famous marks.
And the UKIPO agreed. In a decision in January, UKIPO trademark hearing officer George W. Salthouse stated that there is a chance that consumers might be misled into believing that goods and services bearing the “Cotswold Lashes by Tiffany” name “are those of [Tiffany & Co.] or provided by an undertaking linked to [Tiffany & Co.] … as simply a slightly different use of the [Tiffany & Co.] marks.” As such, the application for “Cotswold Lashes by Tiffany” was formally shot down and the company’s owner Tiffany Parmar was forced to pay £1,000 to Tiffany & Co. as a “contribution towards its [legal] costs.”
Before that, Spanish fast fashion giant Zara successfully took on a trademark application filed by Zara Tanzania Adventures for a figurative trademark, which features the word “Zara” along with “Tanzania Adventures” for use in connection with “travel agency and hotel services,” among other things. In furtherance of its opposition, Zara argued that while it is not in the safari business, there was a risk of confusion, nonetheless, as it is not uncommon for fashion brands, publications, and influencers, alike, to marry fashion and travel trends. Paired with “the current trend of fashion brands evolving into new adjacent markets, such as food, travel, hotels and restaurants,” there is a chance that Zara would be subject to consumer confusion and/or unfair competition should Zara Tanzania Adventures’ mark be registered.
Discussing the case at the time, K&L Gates’ Simon Casinader and Daniel Cartmell said that Zara’s win “demonstrates the far reaching, evolving nature of fashion brands and the markets they can operate in and are expanding into,” noting that in the eyes of the Court of Justice of the European Union, “the risk of unfair advantage could not be ruled out in spite on the differences between the goods and services, and emphasized the importance of considering all relevant factors to the circumstances of the case in order to ascertain the risk.”
Zara had previously threatened to sue the owner of a small, United Kingdom-based business, called Zara’s Countywear. Zara threatened legal action unless the owner, who named the business after her daughter, Zara, rebranded immediately.
Still yet, Chanel made headlines in the U.S. in 2014 when it famously filed suit against a Merrillville, Indiana salon owner named Chanel Jones, alleging that her spa and beauty salon – named Chanel’s Salon – was infringing at least nine of its federally registered trademarks and was benefiting from the established reputation of the fashion company’s name. In what would prove to be a swift win, the U.S. District Court for the Northern District of Indiana sided with Chanel, determining that Jones’ use of the word “Chanel” was, in fact, an infringement of Chanel’s trademark rights, and ordering her to cease all commercial use of the word.
At the heart of these efforts to put a halt to others’ seemingly harmless unauthorized uses of brands’ trademarks is the fact trademark rights – which are some of brands’ most valuable assets – depend on the ability of those marks to identify a single source. The fear of genericide and the risks that come with it are why brands’ legal teams actively police the market for such unauthorized uses. It is why, for years, Chanel periodically has run full page “ads” in fashion publications asking industry insiders, including journalists and critics, to stop using its name to describe non-Chanel items. And it is also why lawsuits in this vein and trademark oppositions are routine practice for luxury brands, in particular.
As for Lycett, there is no guarantee that he will be able to use his new name in a commercial capacity and also avoid trademark liability. After all, the Chanel case – and others – have made perfectly clear that individuals do not have an unfettered right to use their personal name for commercial purposes if that name conflicts with an already established brand name and that name is likely to cause confusion amongst consumers and dilution if the original mark is a famous one.
In a statement provided to TFL, a rep for Hugo Boss said on Monday, “We welcome the comedian formerly known as Joe Lycett as a member of the HUGO BOSS family. As he will know, as a ‘well-known’ trademark (as opposed to a ‘regular’ trademark) HUGO BOSS enjoys increased protection not only against trademarks for similar goods, but also for dissimilar goods across all product categories for our brands and trademarks BOSS and BOSS Black and their associated visual appearance.”
“Following the application by Boss Brewing to register a trademark similar to our ‘well-known’ trademark, we approached them to prevent potential misunderstanding regarding the brands BOSS and BOSS Black, which were being used to market beer and items of clothing,” the rep continued. “Both parties worked constructively to find a solution, which allows Boss Brewing the continued use of its name and all of its products, other than two beers (BOSS BLACK and BOSS BOSS) where a slight change of the name was agreed upon.”
“As an open-minded company,” Hugo Boss’ rep says, “we would like to clarify that we do not oppose the free use of language in any way and we accept the generic term ‘boss’ and its various and frequent uses in different languages.”