BOSS marks for cigarettes burnt off register

Malaysia

Following an application by fashion company Hugo Boss AG, the High Court has ordered the expungement of several marks that incorporate the word 'boss' for cigarettes (Case D4-25-4-1999, July 18 2006).

The marks were originally registered by Hong Kong Tobacco Company Limited in 1965 and were subsequently assigned to Reemtsma Cigarettenfabriken GmbH by virtue of an assignment dated February 1 1999.

Hugo Boss filed its application for expungement under Section 46 of the Trademarks Act 1976 and relied on the following grounds:

  • Reemtsma registered the marks with no intention to use them in good faith in relation to the goods covered by the registration (ie, cigarettes);

  • The marks had not been used in relation to cigarettes for a continuous period of no less than three years up to one month before the institution of the proceedings; and

  • There had been no such use of the marks up to one month before the institution of the proceedings.

Reemtsma argued that Hugo Boss had no standing to file the application under Section 46, as Hugo Boss was not a "person aggrieved" within the meaning of the provision. In order to be a person aggrieved, an applicant must show that it may, in some possible way (ie, in a practical sense), be damaged or injured if the trademarks in question remain on the register. Reemtsma relied on the following grounds:

  • Hugo Boss did not trade in cigarettes;

  • Hugo Boss was at all times involved only in the manufacture and sale of fashion goods such as clothing, footwear, watches and lighters;

  • Hugo Boss's goods of interest and cigarettes were not goods of the same description;

  • Hugo Boss had no intention to trade in cigarettes or tobacco-related goods; and

  • There was no evidence that Hugo Boss had suffered or was likely to suffer any damage from the registration and use of the marks for cigarettes.

Reemtsma also argued that Hugo Boss had failed to adduce sufficient evidence to prove a prima facie case that the marks were registered with no intention to use them in good faith, or that the defendants had failed to use the marks for cigarettes during the material period.

Further, Reemtsma contended that, even if there was a prima facie case of non-use, there was sufficient evidence to show that the marks had been used in good faith during the relevant period, as Reemtsma had taken active and substantial steps to prepare the launch of cigarettes bearing the mark BOSS in Malaysia.

Alternatively, Reemtsma argued that, even if there was a prima facie case of non-use, the court should exercise its discretion not to expunge the registrations for the following reasons:

  • Reemtsma did not abandon the marks; on the contrary, it started using them in relation to cigarettes in Malaysia;

  • Reemtsma had a genuine interest in the marks in relation to its established trade in cigarettes; and

  • Hugo Boss had never traded in cigarettes and had no intention of doing so (especially under the trademark BOSS).

The High Court ruled in favour of Hugo Boss based on the following grounds:

  • Hong Kong Tobacco Company Limited admitted that the marks had not been used in relation to cigarettes;

  • Since the marks had not been used in relation to cigarettes when they were assigned to Reemtsma, the assignment was invalid under Section 55(2) of the act, as it was an assignment without goodwill of business associated with the marks;

  • Therefore, it was unnecessary to deal with the issues raised under Section 46 of the act.

Accordingly, the court ordered that the trademarks be expunged from the register. Reemtsma and Hong Kong Tobacco Company Limited have appealed against the decision, which is now pending before the Court of Appeal.

Michael Soo and Ng Kim Poh, Shook Lin & Bok, Kuala Lumpur

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