Hugo Boss's cigarette marks stubbed out in Singapore

In Reemtsma Cigarettenfabriken GmbH v Hugo Boss AG (Case 2003 SGHC 205), the Singapore High Court has ordered the revocation of Hugo Boss's trademark registrations for BOSS and HUGO BOSS for cigarettes, cigars and other smoking accessories on the grounds of non-use.

The revocation action in the High Court was brought by Reemtsma Cigarettenfabriken - a German company that manufactures and sells cigarettes. German fashion house Hugo Boss registered the marks BOSS and HUGO BOSS in 1974 and 1987 respectively for goods in Class 34 the Nice Classification and, in particular, cigarettes, cigars and other smoking accessories.

In its claim, Reemtsma stated that it had hired private investigators to conduct market investigations in July 1999 and November 2001. They gathered evidence indicating that neither the BOSS nor the HUGO BOSS trademarks had been used in relation to goods in Class 34 in Singapore. Hugo Boss contended that its registered marks had been used on lighters and cigars in Singapore.

Upon reviewing the evidence, however, the High Court found Hugo Boss's evidence of use of the marks "scanty and unsatisfactory", and concluded that the marks should be revoked as they had not been used at all in Singapore in the relevant five-year period under Section 22 of the Trademarks Act 1998. Further, the court held that it had no discretion under that section to allow a mark to remain on the register when grounds for revocation under Section 22(1) had been established.

Penny Leng, Drew & Napier LLC, Singapore