Hugo Boss Hong Kong Case Summary

Case B: Hugo Boss Hong Kong Ltd. Vs. The Britain Boss International Co. Ltd.

Background

In November 2013, Plaintiff H (Hugo Boss Hong Kong Ltd.) filed a legal proceeding against Defendant B (The Britain Boss International Co. Ltd.) on grounds of trademark infringement. The basis of this infringement is the particularity of one word in the entitled name of both parties’ brand – “Boss”. Furthermore, Plaintiff H has asserted that it is due to Defendant B’s usage of almost identical typography and emphasis of the word Boss in its branding that become the strong motive of the infringement. The case however, was put on hold by 2014, as Defendant B has deemed to ignore the notification of subpoena. Subsequently, the unreciprocated writ had resulted

In its claim, Plaintiff H outlines the goodwill and reputation of Hugo Boss Group, in its name, brand recognition and trademarks. Consequently, it has also acquired a considerable reputation and goodwill in Hong Kong, Macau and Mainland China, in relation to its exclusivity of trademarks ownership. With this knowledge in mind, Defendant B has infringed Plaintiff H’s right of trademark ownership by intentionally choosing the word “Boss” to market its brand. Moreover, Defendant B has also use similar typography and almost, if not identical, logo and signage in its marketing collateral – website logo, product packaging, label and embedded marks, as well as physical store signage and logos. With both parties offering the same service, Plaintiff H believes that Defendant B has knowingly and intentionally done so to create confusion amongst laymen and clientele to further its brand. As such, with the legal claim, Plaintiff H has asserted that such intentionality is not only bad practice, but also intended to cause harm to Plaintiff H’s reputation and goodwill within the jurisdiction of Hong Kong, China and

However, due to the different jurisdiction for which the cases were ruled, the granted motion also varies. Despite so, in both cases, confusion is a strong enough support for action, as it is in relation to the misrepresentation of defendant’s goods/services, which collides with those provided by plaintiff. In Case A, in accordance to Lanham Trademark Act s. 43 and 15 U.S.C.A (United States of America Codes of Law) s. 1125 (c) (2) (A), the case is being labeled as dilution case in unfair competition. For Case B, in accordance to Hong Kong TMO Cap.559, the case is treated as passing off. The difference of result is due to the fact that Hong Kong court of law has not adapt and does not agree to parts of the international law, and thus is not agreeing to the clause of dilution. There is a need to stress that international law is often seen as a promise and less enforceable in comparison to state and federal law. As such, international law only applies to jurisdiction that agrees to it. Due to such reasons, both Case A and B, although similar, does not share identical