November 2017. Fashion house Hugo Boss has failed to stop cosmetics brand Carlo Bossi from being registered as a trademark. In a decision of 25 October 2017, the Opposition Division of the European Trademark Office EUIPO concluded that there was no risk of confusion between Boss and Carlo Bossi.
Hugo Boss had claimed that ‘Bossi’ was too like its own word and device mark ‘Boss’. However, EUIPO found that, while it was true the Boss trademark has acquired a high degree of distinctiveness through use for perfumes, the two brands are sufficiently different to pose a risk of confusion.
It’s all in the ‘i’
And although both trademarks included the component ‘Boss’, EUIPO felt that the extra ‘i’ in Carlo Bossi made all the difference. In such a short word, the ‘i’ is an element that will not go unnoticed and substantially changes the perception of the word Bossi, according to EUIPO. This, combined with the name Carlo, made the trademark sufficiently different to Boss.
Could have gone either way
This is one of those cases that in our opinion could have gone either way. If EUIPO had set greater store by the global reputation of the (Hugo) Boss brand, not only for clothing, but also for perfumes, it could have made just as good an argument for the opposite finding (i.e. infringement).
The fact that this is a grey area is shown by the fact that in 2016 Hugo Boss lost a similar case in the EU against cosmetics brand RalphBossi, but won an opposition in France against the Luca Bossi perfume brand the year before. You win some, you lose some.