Tom Jones, from our Dispute Resolution team, looks at the recent case of a small business in Wales trying to assert its intellectual property rights. This David vs Goliath Intellectual Property battle, he says, demonstrates the importance of protecting one’s brand, and of being careful when applying to register a trademark.
The well-known international clothing giant Hugo Boss recently took action against Swansea-based brewery Boss Brewing over the name of some of its products, “Boss Black” and “Boss Boss”. This came after the owners of the brewery applied to register the trademark of its name, a procedure estimated at a cost of £300, and ended up in a battle costing the Welsh business nearly £10,000.
The fashion giant owns rights to “Hugo Boss” and to the shortened moniker “Boss” for various products – although not in alcoholic drinks. They issued a cease and desist letter to the Welsh brewery, asking them to stop it using the name on its products on the basis that it could lead to confusion amongst customers, who may think it connected to Hugo Boss.
Rather than risk further costly litigation, Boss Brewing agreed to change the names of its two products mentioned above to “Boss Brewing Black”, and “Boss Bossy” respectively. It also agreed to stop selling its branded clothing. The owner commented:
“I understand brand identity, you have to look after your brand. But I think it’s a bit unnecessary that this massive clothing company has gone after a small brewery. We have been told we cannot release any clothes, and we’ve got to get rid of all of our hats and t-shirts we have printed. The whole process should have cost £300 but it ended up costing us nearly £10,000. This has been a horrible experience, and so stressful.”
In the world of intellectual property rights, it can be emotionally and financially difficult to let go of a name or a brand created from the ground up, particularly when that has started to yield its own results and good will from customers. The owners of Boss Brewing must surely have felt this, but may well have also accepted the pragmatism of settling early and avoiding lengthy and further costly proceedings.