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Chloe Fernandez
Chloe Fernandez,
PARALEGAL
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Who's the Boss?
05 March 2020

Comedian goes head to head with fashion house over trade mark enforcement strategy

In a protest against the luxury German fashion house for allegedly targeting small companies and charities that use the word “boss” in their names, Joe Lycett has legally changed his name to Hugo Boss.

It all stems from a case involving a Welsh brewery, Boss Brewing, which spent almost £10,000 on legal and rebranding fees, after Hugo Boss sent it a cease and desist letter when the brewer tried to register its brand. Hugo Boss asserted that the names of the company’s beers - Boss Black and Boss Boss - could cause confusion amongst consumers as to the source of the products, particularly since the brewery also made and sold branded merchandise. The parties eventually settled, with Boss Brewing agreeing to change the name of its beers and refrain from selling clothing merchandise.

Mr Lycett, the British comedian who has appeared on Never Mind the Buzzcocks and QI, tweeted “So, Hugo Boss (who turnover approx. $2.7 billion a year) have sent cease and desist letters to a number of small businesses and charities who use the word ‘BOSS’ or similar, including a small brewery in Swansea”. He added “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”.

The tweet has been retweeted thousands of times and the story has been picked up globally which all goes to highlight the importance of striking the right balance when it comes to cease and desist letters. A light-hearted letter can attract praise and lead to positive media coverage – see, for example, Jack Daniel’s polite and friendly letter to a novelist, whose latest book cover resembled a Jack Daniel’s label or Netflix’s tongue-in-cheek letter to the owners of a pop-up bar with a ‘Stranger Things’ theme. On the flip side, the craft beer company, BrewDog (which promotes a “punk anti-corporate ethos”), was denounced on social media for its bullying attitude when it threatened legal action for trade mark infringement against a family-run pub.

Of course, ultimately cease and desist letters must be taken seriously and put a stop to the infringing action but there is definitely a balance to be struck, particularly if the letter might attract publicity. Sometimes sending a letter that merely seeks information on use of the mark by the alleged infringer can be more effective and lead to an amicable resolution.

So what now for Joe Lycett AKA Hugo Boss? The stunt will likely feature in the second season of his comedy show ‘Joe Lycett’s Got Your Back’, in which the comedian defends consumer rights. Provided he does not trade under the name and use it in a commercial capacity, he is likely to avoid a claim for trade mark infringement. In fact, Hugo Boss have now issued a statement which says “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. 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.”

So what should a small business do if it receives a cease and desist letter? First and foremost, don’t panic. Seek legal advice, particularly if the sender is requesting a signed undertaking, and ask for more time if you need it, to prepare a formal response. Remember that in many cases, an amicable solution can be reached.

If you have any trade mark or branding queries, please do get in touch with Chloe Fernandez at Boyes Turner LLP at [email protected].

Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.

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