Clothing and accessories brand Hugo Boss has recently found itself making headlines, and probably not for the reasons it would like.
Comedian Joe Lycett has announced he has changed his name by deed poll in 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.
Of particular concern to Lycett seems to be the case of Welsh brewery Boss Brewing. After applying for a trade mark registration, Boss Brewing received a letter from Hugo Boss, objecting to their use of the element Boss in two beer names. 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 trade mark situation, they 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.
"As an open-minded company 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".
This is certainly not the first case of a cease and desist letter resulting in embarrassing news reports. In 2014, it was widely reported that a small knife maker Bear Blades had received a letter sent on behalf of Bear Grylls Ventures, the company of television adventurer Bear Grylls, requesting that they cease use of the element “bear”. Following a backlash on Twitter, Grylls ended up apologising, telling Bear Blades “You guys are good to go”.
These cases highlight the potential PR headache that can follow even legitimate enforcement of trade mark rights. Brand owners need to give careful consideration to possible bad press, particularly where small businesses, individuals and charities are involved, and any steps that can be taken to mitigate this risk. There is no ‘one size fits all’ approach to trade mark enforcement; in some cases a strong cease and desist letter will be the most appropriate option, but this isn’t always the case, particularly in a world where anything you say can find its way onto Twitter in a matter of minutes.
Use of your own name – trade mark infringement?
In this most recent case, Lycett, now Boss, has taken his protest even further, announcing he will be “launching a brand new product as Hugo Boss”, details of which are to be revealed on the upcoming series of TV show Joe Lycett’s Got Your Back.
Readers may well be reminded of another case of change of name which began in June 2016, when the estate of the late singer Elvis Presley opposed BrewDog’s UK trade mark applications for the marks ELVIS JUICE and BREWDOG ELVIS JUICE. In response, the founders of BrewDog changed their names to Elvis by deed poll. In a statement on their website they said “Unfortunately, it appears that the late Mr Presley’s estate has got itself All Shook Up over a little beer called Elvis Juice… we have naturally taken the only sensible and effective course of action to ease their Suspicious Minds; As of the 4th of October 2016, our two co-founders, James and Martin have both have legally changed their names to 'Elvis' by deed poll”.
In the UK, a registered trade mark is not infringed by the use by an individual of his own name or address. However, this provision only applies where the use is in accordance with honest practices in industrial or commercial matters. Absent any other relevant facts or circumstances, changing your name simply to avail yourself of a potential defence to trade mark infringement proceedings would not seem to meet this requirement, making it little more than a creative publicity stunt in reality.
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