12 March 2020TrademarksRebecca Anderson-Smith

What’s in a name? Enforcing trademark rights and the ‘own name’ defence

Fashion brand Hugo Boss has found itself making headlines this month, and probably not for the reasons it would like.

Comedian Joe Lycett has announced that he has changed his name by deed poll to protest against the well-known brand sending cease and desist letters to small businesses and charities, objecting to the element “Boss” in their names. The move has attracted a lot of attention in the press and on social media, with “Hugo Boss” becoming a trending topic on Twitter shortly after the announcement was made on March 1.

Of particular concern to Lycett seems to be the case of Welsh brewery Boss Brewing. After applying for a trademark registration, the brewery received a letter from Hugo Boss, objecting to its use of the element “Boss” in the names of two beers. Resolving the dispute has reportedly cost Boss Brewing thousands of pounds in legal fees. Owner Sarah John has said: “I understand brand identity, you have to look after your brand. But I think it's a bit unnecessary that this massive clothing company has gone after a small brewery.”

A potential PR nightmare

In light of the significant media coverage Lycett’s stunt has received, Hugo Boss has issued a response. A spokesperson said: “We welcome the comedian formerly known as Joe Lycett as a member of the Hugo Boss family.”

Addressing the trademark situation, the spokesperson went on to say: "…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.

"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.

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