Hugo Boss successfully opposes registration of BOSS for cigarettes

In Reemtsma Cigarettenfabriken GmbH v Hugo Boss AG (September 25 2009), the registrar of the Intellectual Property Office of Singapore has upheld an opposition against the registration of the trademark BOSS for tobacco products.

This case is part of an ongoing worldwide battle between Reemtsma Cigarettenfabriken GmbH and Hugo Boss AG over the use of the mark BOSS for cigarettes and smokers’ articles. In Singapore, Reemtsma has successfully applied for the cancellation of Hugo Boss's BOSS and HUGO BOSS marks on the grounds of non-use.
In the present case, Reemtsma sought to register the BOSS mark for “tobacco, tobacco products, particularly cigarettes and cigarillos, smoker’s articles and matches”. Hugo Boss opposed the application under Section 15 of the Singapore Trademarks Act.
Section 15 of the act reads as follows:
"It shall not be lawful to register as a trademark or part of a trademark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design."
Hugo Boss argued that should Reemtsma be allowed to sell cigarettes under the BOSS mark in Singapore, consumers were likely to be confused as to the source of Reemtsma’s goods due to Hugo Boss's substantial international reputation as a luxury brand. Hugo Boss also pointed out that certain luxury companies have branched out into the tobacco trade (eg, Yves Saint Laurent and Cartier).  
The registrar held that because Reemtsma did not sell cigarettes in Singapore as of the date of the application, use of the BOSS mark on cigarettes would cause confusion among the public as to the source of Reemtsma's goods. The likelihood of confusion was increased by the fact that Hugo Boss had a reputation in its BOSS mark in respect of a wide variety of goods.
The application was thus rejected.
The registrar's findings are in line with the decision of the Court of Appeal of Singapore in Tiffany & Co v Fabriques de Tabac Réunies SA ([1999] 3 SLR 147), in which it was held that manufacturers of luxury goods have been known to licence their trademarks for use on cigarettes, even if they did not produce tobacco products themselves. As Tiffany & Co had a reputation in the TIFFANY mark for jewellery and other high-end goods in Singapore, there was a likelihood that the relevant public would be misled into thinking that TIFFANY-branded cigarettes originated from Tiffany.

Paul Teo and Eileen Chong, Drew & Napier LLC, Singapore

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