For many people the word "BOSS" on a piece of clothing evokes the German luxury fashion house Hugo Boss. (Employers usually don't need to affix a BOSS mark on their clothes to signal their position.)
Yet for some, especially in Merseyside in the northwest of England, "BOSS" is also just a slang term used to describe something or someone nice.
So it is with a certain amount of shock and disbelief that John Charles, a Merseyside-based artist, received a cease and desist letter from Hugo Boss's lawyers, informing him that the company intended to oppose his application to register the trademark "BE BOSS, BE KIND" for use in association with hoodies, baseball caps and t‑shirts. In the letter, Hugo Boss asserted that use of the "BE BOSS, BE KIND" mark would damage its goodwill in the United Kingdom in connection with the word "BOSS" and would amount to passing-off.
For months, Charles had been saying the 'Be Boss, Be Kind' slogan at the end of each online art class he was giving with his 10-year-old daughter, for free, to children homeschooling during the coronavirus lockdown. More than 27,000 people attended the class. Bowing to popular demand, Charles decided to continue the classes and offer merchandise bearing the "Be Boss, Be Kind" slogan (to save for his daughter's education). He also filed a trademark application for that slogan in the UK.
The story has attracted local, national and international attention, given Hugo Boss's notoriety. Charles and his family have received public sympathy.
Reportedly, the letter sent to Charles specified that Hugo Boss would be filing a Notice of Threatened Opposition against his application primarily to extend the opposition deadline by one month to allow time to resolve the matter amicably without initiating formal opposition proceedings. In the media, the company has also expressed openness to reach a mutual agreement with the family. Depending on the circumstances of a case, such a balanced approach may be appropriate to avoid unnecessary public backlash.
Regardless of the strength of Hugo Boss's claims, this situation provides a useful reminder for brand owners. Your legal rights are important, but so is your reputation. It would be a shame to lose your goodwill while trying to protect it.
About Norton Rose Fulbright Canada LLP
Norton Rose Fulbright is a global law firm. We provide the world's preeminent corporations and financial institutions with a full business law service. We have 3800 lawyers and other legal staff based in more than 50 cities across Europe, the United States, Canada, Latin America, Asia, Australia, Africa, the Middle East and Central Asia.
Recognized for our industry focus, we are strong across all the key industry sectors: financial institutions; energy; infrastructure, mining and commodities; transport; technology and innovation; and life sciences and healthcare.
Wherever we are, we operate in accordance with our global business principles of quality, unity and integrity. We aim to provide the highest possible standard of legal service in each of our offices and to maintain that level of quality at every point of contact.
For more information about Norton Rose Fulbright, see nortonrosefulbright.com/legal-notices.
Law around the world
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.