Hugo Boss And Art Teacher Reach 'Amicable Solution' Over 'Be Boss, Be Kind' Trademark Application

from the who's-the-boss? dept

Several weeks back, we discussed how Hugo Boss, German upscale clothier, had opposed the trademark application for an artist who has taken to teaching online art classes during the pandemic. At issue was John Charles' decision to apply for a trademark on the phrase he used to sign off at the end of these classes: "Be Boss, Be Kind." That he had begun selling shirts and hats with the slogan on it, alongside the trademark application, was enough to get Hugo Boss' lawyers working on opposing the application and sending a legal threat letter to Charles, despite the fact that any claims about potential customer confusion between the two entities is laughable at best.

As we noted at the time, while any legal letter such as this is at least mildly scary for someone like Charles, it should be stated that Hugo Boss wasn't overly threatening in the letter. Instead, the letter stated that the company would be opposing the trademark application, but was willing to drop the matter entirely if that application was withdrawn. In public comments, too, Hugo Boss made it clear that it was looking for an amicable resolution to the situation.

And that, almost certainly in large part to the swift public backlash that occurred, is precisely what happened.

Now, Hugo Boss and the popular artist have reached an 'amicable solution' - and John has said 'it was all worth it.'

John said: 'We've now reached an amicable solution and the key thing is that we're able to continue our free online art classes and release our merchandise to the public officially. I'd like to say a massive thank you to the public for all their support, it's been really overwhelming."

As usual, the exact details of this amicable solution aren't explained publicly, but it's worth noting that nowhere in any of the coverage currently is the acknowledgement that Charles has been allowed to proceed with his trademark application. And that, frankly, is the detail we should be focused on. Yes, it's good that Hugo Boss isn't threatening Charles with legal action. Yes, it's also good that he's being allowed to continue his art classes and even sell his merch with the slogan. That's somewhat more permissive than I expected out of Hugo Boss.

But there was never a valid trademark issue here in the first place and, while I don't really see why Charles needs this trademark for which he applied, he certainly should have gotten it. "Be Boss, Be Kind" is not going to confuse someone into thinking a t-shirt is a Hugo Boss t-shirt. The reach of Charles' audience isn't a threat to Hugo Boss, either. No part of this screamed for a resolution of anything at all, amicable or otherwise.

It's sort of an offshoot of how trademark bullying is effective. On the one hand, a large enough company can bully smaller entities into not using anything remotely like its registered trademark, validly or otherwise, just because of the costs associated with those threats. Or there are cases such as this, where the big company can bully the smaller entity until it gets news coverage talking about a supposedly amicable deal.

Both are pernicious, if not equally so.

Filed Under: art teachers, be boss, be kind, boss, hats, john charles, shirts, trademark
Companies: hugo boss

Hugo Boss Opposes Artist's 'Be Boss, Be Kind' Trademark For Merch

from the boss-baby dept

The last time we discussed Hugo Boss, the famed upscale clothier based out of Germany, it was when the company sent a C&D notice to Boss Brewing, which makes beer. While there can be no doubt that Boss Brewing would have won any dispute on the merits, given that the two entities are simply not playing in the same marketplace and there was zero chance of any kind of public confusion in commerce, Hugo Boss got its pint of blood by getting the brewery to change the name of two of its beers in a barely perceptible way.

In other words, there was no real or potential harm done to Hugo Boss over the target of its dispute, but these sort of trademark actions are more reflex than logic.

And here we go again, with Hugo Boss sending another notice to an artist who decided to trademark a phrase he uses to conclude his art lessons with for use on merch.

Father-of-one John Charles was hit with a threatening legal letter from lawyers representing the luxury fashion brand after he applied to trademark his 'Be Boss, Be Kind' clothing and hat designs.

The slogan, containing the word 'Boss', which in Scouse slang means 'very good' or 'great', was used by Mr Charles' at the end of his online art lessons - which he launched during lockdown.

"Be Boss, Be Kind" is not "Hugo Boss". In fact, given the part of the UK where Charles is from, "boss" is very much a common slang term for "awesome" or "the best". That his following, those that enjoy his art lessons, would somehow suddenly think he had anything to do with Hugo Boss is absurd on levels rarely seen.

As for the contents of the letter, they weren't overly aggressive. It states that Hugo Boss plans to oppose Charles' trademark application, but would drop the matter entirely if he agreed to drop his application. The company has also stated publicly that they're looking for an amicable resolution to all of this.

Except that no resolution is needed. There's no confusion to worry about here. No trademark infringement. Charles is an art teacher who teaches children remotely during the COVID-19 pandemic. As plenty of people have shown through public comments, this is nothing.

Hundreds of people have since spoken out in support of John.Many have since said that it's 'easy to see' that Be Boss Be Kind has no connection to the German fashion giant. Other residents also agreed with John that the word 'boss' is a Liverpool saying.

On Facebook, Anne Porter commented: 'Boss' is a word 9/10 Scousers use with no connection to Hugo.'

PoliteScouser added: 'Boss is a Liverpool slang word for the best. He has as much right to use the word from his local dialect as any other person place or thing.'

Despite this, Hugo Boss' letter claims that its brand's "goodwill" will be threatened if Charles gets his trademark. In my view, it sure seems like its the opposition that is hurting any goodwill the brand might have.

Filed Under: be boss, be kind, boss, john charles, likelihood of confusion, trademark
Companies: hugo boss

Brewery In Wales Changes Name Of 2 Beers After Fight With Hugo Boss

from the who's-the-boss? dept

For some time now we've discussed in a series of posts the trademark fallout that has hit the craft brewing industry. With the explosion of this industry throughout the world, the once-congenial attitude breweries had towards intellectual property concerns has slipped away, replaced by both aggression when it comes to protecting IP and the threat of aggressive action from those outside the industry, given the amount of money being made in brewing. It's been sad to see and it has frankly led to some of the silliest IP disputes I've ever seen.

As in any other industry, however, the truly frustrating stories when it comes to trademark disputes in the brewing business involve those outside the industry initiating conflict where it doesn't belong. The most recent example of this is Boss Brewing having to change the name of a couple of its beers after being bullied by Hugo Boss, the upscale clothier.

As reported by Wales Online, Boss Brewing, which was founded in 2014, received a cease and desist letter from high-end fashion retailer Hugo Boss after applying to trademark its brand.

According to records published by the Intellectual Property Office, two Boss Brewing trademarks were taken out in October 2018 in a process which usually costs around £300. However, the brewer was instead required to pay almost £10,000 in legal fees during a four-month battle.

Co-owner of the business, Sarah John, told Wales Online that Hugo Boss was “adamant they wanted to stop the name” from being trademarked. The company told John that it owned the Boss trademark in most of the world, but that it did not own rights to it in relation to alcohol.

Again, trademark law is typically designed to keep the public from being confused as to the source of a good or service. The opposition and cease and desist notice from Hugo Boss apparently views the public as being unable to distinguish a maker of beer and a maker of clothing. Where perhaps I could see Hugo Boss having some issue with any apparel merchandise the brewer might have with the "Boss" name -- and even that would be a stretch -- taking issue with the name of the brewery or its beers seems remarkably silly.

But trademark bullying works, especially when the bully has much more money than its victim.

A compromise was eventually reached, whereby Boss Brewing was required to change the name of two of its beers. Boss Black, a 5% ABV stout, has become Boss Brewing Black, and Boss Boss, a 7.4% ABV double IPA, is now Boss Bossy.

The brewer is also forbidden from selling its branded clothing, which include hats and t-shirts.

John added: “We’ve got pallet loads of Boss Black which we are going to have to go through and change the labels of, which will be of great expense and time for a small brewery. This has been a horrible experience, and so stressful. We have worked so hard to create all of this and what should have been a simple process ended up making us question whether everything was going to be OK going forward in the future and whether we were going to lose everything."

And for what? To ensure the public isn't confused with the famous Hugo Boss line of clothing and a tiny Welsh brewery? It's enough to make one need a drink.

Filed Under: boss, craft beer, trademark
Companies: boss brewing, hugo boss