HUGO BOSS not a notorious mark, rules minister of trade

Venezuela

In Hugo Boss AG v Citadino Internacional CA (Cases 21758/21759/21760/21761-1988), the Venezuelan minister of trade has rejected Hugo Boss's opposition to the registration of the mark BOSS DE CITADINO. The minister held that Hugo Boss had failed to demonstrate that its HUGO BOSS mark was notorious in Venezuela.

Venezuelan company Citadino Internacional filed an application for registration of the mark BOSS DE CITADINO and design in Classes 16, 26 and 28 of the Nice Classification. The applications were opposed by Hugo Boss, a German fashion house. It argued that the BOSS DE CITADINO mark was confusingly similar to its HUGO BOSS mark. Hugo Boss also stated that its trademark was a notorious mark and was therefore entitled to preferential protection.

The trademark registrar allowed Hugo Boss's opposition and rejected Citadino's application. The registrar then rejected an appeal and Citadino brought the case before the minister of trade.

In the proceedings before the minister of trade, Citadino argued that BOSS DE CITADINO is a compound trademark, of which only one word corresponds to the HUGO BOSS mark - the word 'Boss'. It also contended that:

  • the addition of the word 'Citadino' rendered its trademark novel;

  • it had filed an application for registration of the mark BOSS in 1986, giving it priority rights; and

  • Hugo Boss had failed to prove that its HUGO BOSS mark was notorious.

The minister ruled in favour of Citadino and allowed registration of its mark. The minister agreed that Hugo Boss had failed to demonstrate that its HUGO BOSS mark was notorious in Venezuela.

The ruling highlights a number of factors that mark owners, seeking to protect their rights in Venezuela, should bear in mind:

  • No registry or list of notorious trademarks exists in Venezuela. Protection is determined by the Trademark Office on a case-by-case basis.

  • The time between the filing of an opposition action and the final determination can be over two years. Notoriety may weaken through time, which has the effect that a mark considered to be notorious at the time of opposition may not be by the time the registrar issues his or her decision. Therefore, the owner of a notorious trademark involved in an opposition action must keep the evidence that its mark is notorious updated.

  • In spite of the protection conferred to notorious trademarks by international treaties, it is always advisable to apply for registration of a mark in Venezuela as this is likely to increase the mark owner's chances of receiving a favourable decision.

It is expected that Hugo Boss will appeal to the Supreme Court.

Richard N Brown and José Gutiérrez R, De Sola Pate & Brown, Caracas

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