Taiwan Supreme Administrative Court Finds Against Hugo Boss over “Baby Boss” Trademark Dispute

In 2007, Babyboss City Limited (hereinafter “Babyboss”) successfully registered its “Babyboss and device” mark with the Taiwan IPO and designated the mark to be used on the tea bags, beverage made with chocolate, and ice cream products under Class 13 of List of Classes of Goods and Services of the Enforcement Rules of Trademark Act operable at that time (hereinafter the “disputed mark”).  This successful registration aroused attention from the German company, Hugo Boss Trade Mark Management GmbH & Co. KG (hereinafter “Hugo Boss”), renowned for its garments and leather bags products, which requested with the Taiwan IPO for revoking the registration of disputed mark by the reason that Babyboss took a free ride on Hugo Boss’s business reputation by using the word “Boss” as a part of the disputed mark.  Taiwan IPO then examined Hugo Boss’ request, deciding that Babyboss’s registration for the disputed mark should be revoked on the ground that the registration was in contravention of the first part of subparagraph 12 of the 1st paragraph of Article 23 of the Taiwan Trademark Act operable in 2003 and the first part of subparagraph 11 of the 1st paragraph of Article 30 of the current Taiwan Trademark Act.  Out of dissatisfaction with Taiwan IPO’s above decision, Babyboss filed an administrative appeal but the appeal turned out unsuccessful, for which Babyboss initiated an action with the Taiwan IP Court.  The IP Court then decided to vacate the original appeal decision and Taiwan IPO’s decision.  In this regard, Hugo Boss filed an appeal against the IP Court’s decision and appealed this case to the Supreme Administrative Court.  The Supreme Administrative Court rendered a judgment under docket (103) Pan-Zi No. 237 [2014] to vacate the IP Court’s decision and remanded this case back to the IP Court for retrial.  The IP Court maintained its original decision and thus caused Hugo Boss to further appeal this case to the Supreme Administrative Court. 

The IP Court reexamined the remanded case and still decided in favor of Babyboss by the holding that except for the English word “BOSS” that is used in both marks and their minor similarity of pronunciation and appearance, the two marks in dispute have little similarity and different design concept and targeted consumer groups.  Hugo Boss’ trademark consists of only English words, including “Boss”, meaning superior management as opposed to Babyboss’s disputed mark which comprises the English word “Babyboss” in smaller size at the bottom of the whole mark, colorful devices, and also three color devices representing three kinds of occupations.  In addition, the designated products and services of the two marks are not identical nor similar; the disputed mark is designated for use on food products, which are none of the designated specification of the “Hugo Boss” mark.  Based on the foregoing reasoning and holding, the judge decided that there is no likelihood of consumers confusion occurring between the two marks because of their different targeted consumer groups and the degree of their respective consumers’ familiarity with the two marks.  Thus, the IP Court decided that the Taiwan IPO’s original decision contravened the laws by sustaining the applicability of the first part of subparagraph 12 of the 1st paragraph of Article 23 of the Taiwan Trademark Act operable at that time and the first part of subparagraph 11 of the 1st paragraph of Article 30 of the current Taiwan Trademark Act.

With respect to Hugo Boss’s appeal that the IP Court’s original decision contravened the laws and should be vacated accordingly, the Supreme Administrative Court found it groundless and dismissed it.  The case is finalized accordingly.   (September 2015)
/CCS