Luxury fashion company's marks struck off the register

In Virginia Carolina Corp Inc v Hugo Boss Trademark Management GmbH (December 7 2010), the registrar of trademarks has struck the trademarks HUGO BOSS and BOSS off the register on the grounds of non-use.

Luxury fashion retailer Hugo Boss Trademark Management GmbH has held registrations for the marks HUGO BOSS (Registration 68299) and BOSS (Registration 68304) in respect of tobacco products and various smokers’ accessories in Class 34 of the Nice Classification since 1988. Tobacco manufacturer Virginia Carolina Corp Inc (VC) applied to have the registrations struck off the register on the grounds of non-use. VC submitted that it wished to register the mark BOSS in Class 34 in its name.

VC argued that Hugo Boss:
  • had made no use of the marks in respect of the goods for which they were registered;
  • had no good-faith intention to use the marks; and
  • in any event, had not used the marks during the three consecutive years preceding the application, as required by Section 41 of the Trademarks Ordinance (New Version) (5732/1972).
In support of its claims, VC submitted an affidavit by a private investigator, who testified that no use of the mark had been found in several stores in various regions across the country.
The registrar reiterated that, for the purpose of removal on the grounds of non-use under Section 41 of the ordinance, the following factors must be examined:
  • first, whether the owner had a good-faith intention to use the mark and whether actual use was made during the three years preceding the application;
  • second, whether there were special circumstances in the trade that prevented the owner from using the mark; and
  • third, whether the registrar was justified in exercising his or her discretionary power to refuse removal.
The registrar found that VC had demonstrated that Hugo Boss had made no use of the marks (as shown by the affidavit). The registrar further concluded, in view of a statement of the affiant, that:
  • the marks had never been used in Israel with respect to tobacco products; and
  • Hugo Boss never intended to use the marks with respect to the goods for which they were registered.
The registrar noted that, by allowing the marks to remain on the register despite the lack of use, he would, in effect, allow the existence of defensive registrations and, therefore, unduly limit the use of marks which are not entitled to protection.
The marks were thus struck off of the register, and costs of IS18,000 (approximately €3,800) were awarded.

David Gilat and Sonia Shnyder, Gilat Bareket & Co, Reinhold Cohn Group, Tel Aviv

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