What Was the Dispute About?
This peculiar case began when Hugo Boss, a German fashion company that has become synonymous with luxury and high-quality clothing, accessories, and cosmetics, put out a legal challenge against a small Swansea-based brewery in October 2018. The dispute occurred over the usage of the word “BOSS” in the name of Boss Brewing products.
Boss Brewing had previously secured a trademark registration for their logo having applied for the standard £300 to protect its name on 23 October 2018. Little did they know that this decision would quickly spiral down into a year-long legal dispute that would amount to over £10,000 of legal fees and great amount of anxiety. After going back and forth with solicitors, the owners Sarah John and Roy Allkin were forced to rename some of their best-selling beers and scrap all merchandise products connected to them.
Ms. John commented: 'This has been a horrible experience, and so stressful. We have worked so hard to create all of this and what should have been a simple process ended up making us question whether everything was going to be okay going forward in the future and whether we were going to lose everything.’ [1]
The Issue of Brand Bullying
To put things into perspective, Hugo Boss has a net income of £236million while Boss Brewing is £202.5k. And this is not the first time Hugo Boss has received media coverage for going after smaller companies, as it has previously tried to appose multiple registrations of the word Boss without much success [2]. At first glance, it may be difficult to determine on what grounds exactly is Hugo Boss challenging registration of trademarks for products outside of its covered classes of goods and services. Hugo Boss is not selling beer (at least for now), so what makes it’s opposition eligible? The unfortunate truth is that well-known trademarks generally have broader protection than other marks, as they can claim that the opposing applicant is trying to take advantage of its reputation by registering a similar name.
Even so, it doesn’t give big brands such as Hugo Boss the right to bully small businesses, and this idea seemed to resonate with a lot of people. Following their loss, Boss Brewing received numerous messages of support and solidarity, thousands of social media followers, immediate increase in sales and even new international distributors [3]. This case gained even more prominence after British comedian Joe Lycett announced on Twitter that he had legally changed his name to Hugo Boss. This move was part of the protest against the fashion brand for what Lycett perceived to be an aggressive approach to brand enforcement.
So what do we have in the end? The strategy of Hugo Boss to secure its intellectual property ended up causing more damage to their reputation than anybody could have ever expected. This is why brands should carefully consider how they handle individual dispute cases, evaluate real risk of brand confusion or potential de-valuation of the brand and try to negotiate an outcome that wouldn’t reflect poorly on brand’s long-term reputation.
References
[1] MailOnline, „Small Welsh brewery is forced to change the name of its beers as it spends almost £10,000 defending itself in legal battle against fashion giant Hugo Boss”, available from: https://www.dailymail.co.uk/news/article-7344501/Hugo-Boss-forces-Welsh-brewery-change-beers-10-000.html [2] Azrights, „HUGO BOSS vs BOSS BREWING“, available from: https://azrights.com/media/news-and-media/blog/2020/03/hugo-boss-vs-boss-brewing/ [3] Morningadvertiser, „Hugo Boss battle ‘a great source of empowerment and determination’“, available from: https://www.morningadvertiser.co.uk/Article/2020/12/28/How-has-2020-changed-people-and-pubs-Joe-Lycett-Hugo-Boss-Boss-Brewing
