Hugo Boss - the Comedian Formerly Known as Joe Lycett
Comedian Joe Lycett has changed his name by deed poll, protesting heavy handed legal action taken by the fashion house against charities and small businesses.
The unlikely new British small business champion, comedian Joe Lycett, has recently taken the bold step of changing his name by deed poll. He is protesting what he sees as heavy-handed legal action taken by Hugo Boss (the fashion house) against charities and small businesses who use the word 'Boss' in their own branding.
On 1 March, the comedian tweeted: 'So @HUGOBOSS (who turnover approx 2.7 billion a year) have sent cease & desist letters to a number of small businesses & charities who use the word 'BOSS' or similar, including a small brewery in Swansea costing them thousands in legal fees and rebranding.'
One of the cases protested by the comedian involved a small craft brewer, Boss Brewing. It was forced to rebrand two of its beer products, 'Boss Boss' and 'Boss Black', after a legal battle with the fashion house. The fashion house had also objected to the registration as a trade mark of a logo incorporating the words 'DarkGirlBoss' by a female empowerment charity.
Having announced his new name, the comedian also said he would be "launching a brand new product as Hugo Boss" on his tv programme. A recently published application in the name of Hugo Boss for the trade mark, 'Boss La Cease en Desiste' suggests there is more fun to come.
What Are My Trade Mark Rights?
This story highlights the broad trade mark rights that are afforded to well-known trade marks, such as the fashion house's BOSS and HUGO BOSS marks. These can be enforced not only against those in similar lines of business (clothing, perfumery, leather goods, etc), but also those whose products and services are dissimilar (craft brewing, female empowerment charities, etc).
Given the potential costs involved in defending a trade mark infringement claim (particularly against a wealthy opponent such as the fashion house), many charities would be tempted to surrender on receipt of a cease and desist letter from the trade mark owner. However, there are defences to allegations of trade mark infringement that should be explored before taking any action. For example, if the charity has been using the name or brand in question in the UK for longer than the trade mark owner, then the charity's rights will prevail over the trade mark owners.
This case is a striking reminder of how important it is to understand the extent of your charity's rights in its name and in other marks - such as a new logo, campaign or project name - and to register them as trade marks where appropriate. That is only the first step - trade marks can be valuable assets and to protect them you need to police the charity's trade mark rights. For example, internet searches should be conducted regularly to identify any third parties using the charity trade marks. Legal advice should then be sought on whether action is appropriate and, if so, the actions available.
This case also serves as a reminder to those seeking to enforce trade mark rights to consider the potential negative PR consequences of doing so. This is particularly relevant for charities, where the use of charitable funds to enforce intellectual property rights can (often unjustifiably) be perceived negatively by the press and public.
As the Charity Commission observes in its guidance on litigation,'[p]rospective donors may share the dismay expressed by Robert Walker J, in British Diabetic Association v Diabetic Society Ltd … who described a passing off action between charities as:
“a deplorable, even scandalous thing to occur. Charities solicit donations from the public (and for a charity such as the association fund-raising is quite big business, as its accounts show) in the expectation that donations will be spent on furtherance of the charity’s purposes”.
Before responding to any threats of trade mark enforcement action, or indeed taking any enforcement action yourself, we strongly recommend seeking specialist legal advice.