Hugo Boss Trademark And Others v The Britain Boss International Co Ltd And Another [2018] HKCA 381

Summary

On 6 July 2018, the Hong Kong Court of Appeal reversed the High Court’s decision and held that Hugo Boss AG (“Hugo Boss”) was not able to rely on internet evidence in support of their trade mark infringement and passing off claim.

The Court of Appeal allowed this appeal.

Background

Britain Boss International Co Ltd (“Britain Boss”) is a fashion company which was incorporated in Hong Kong in August 2001. They own a number of trade marks registered in China, including “BOSSSUNWEN” and “BOSSCO”, and the domain names “bossunwen.com” and “bosssunwen.cn”.

Hugo Boss is a luxury fashion company whose local subsidiary was incorporated in Hong Kong in 1982. Hugo Boss own marks containing the words “Hugo” and “Boss”.

The two brands have a history of dispute over trade marks. For instance, in October 2006, Britain Boss filed a trade mark application in Hong Kong for the mark “BOSSSUNWEN” in Classes 18, 25 and 43, which was not allowed to proceed to registration.

In this case, Hugo Boss sued Britain Boss for trade mark infringement under s. 18(3) and 18(5) of the Trade Marks Ordinance and passing off. Hugo Boss claimed that Britain Boss’ marks were confusingly similar to their registrations for identical and/or similar goods and were likely to cause confusion among consumers.

High Court’s Decision

The High Court allowed these two claims.

1. Trade Mark Infringement Claim

There was a prima facie infringement on the basis that Britain Boss’ marks were confusingly similar to Hugo Boss’ marks in Hong Kong in respect of identical or similar goods. Hugo Boss’ claim for trade mark infringement was consequently allowed.

The High Court held that:

  • There was evidence showing that Britain Boss intended to expand their operations by targeting consumers in Hong Kong;
  • There was evidence of online sales to consumers in Hong Kong; and
  • There was evidence showing that, whilst Britain Boss had used the registered trade mark “BOSSSUNWEN”, they had also used the BOSS sign by depicting it predominantly in their mark.

In light thereof, the Court held that Britain Boss showed an intention to conduct business in Hong Kong and target Hong Kong consumers via its websites.

2. Passing Off Claim

The High Court also held that Hugo Boss succeeded to establish that it had acquired goodwill in Hong Kong. Britain Boss’ conduct amounted to a misrepresentation causing damage or likely to cause damage to Hugo Boss’ goodwill and reputation. Hence, the passing off claim succeeded.

Court of Appeal’s Decision

Britain Boss appealed against the High Court’s judgement, specifically:

  • The finding that Britain Boss was responsible for certain online sales of infringing products;
  • The conclusion that their websites were targeting the general public in Hong Kong.

The Court of Appeal allowed Britain Boss’ appeal on these grounds.

1. Britain Boss not responsible for online sales

The Court of Appeal overturned the High Court’s decision on the admissibility of evidence related to online sales. Hugo Boss’ evidence was unclear as to who had actually purchased the goods. The goods were ordered via online shopping portals on which a large number of sellers put goods up for sale. Hugo Boss failed to show that Britain Boss had authorised or participated in the sale. Further, the goods were ordered via a website that was not related to Britain Boss.

2. Websites not targeted at Hong Kong consumers

The Court of Appeal held that the websites were not targeted at Hong Kong consumers. First, because those websites used Simplified Chinese Characters, and second, because the goods offered for sale were priced in Chinese Yuan Renminbi, which is the official currency in Mainland China, but not in Hong Kong. It was also held that there wasn’t any clear evidence of growing sales and activities in Hong Kong for Britain Boss.

Considerations when using online sales as evidence

The Court of Appeal held that websites accessible to consumers in Hong Kong weren’t necessarily targeted at Hong Kong consumers. Therefore, to decide whether websites are relevant enough to be considered as evidence, the following additional elements must be considered:

  • Trade mark registrations owned by the defendant in Hong Kong and China;
  • Language of the website;
  • Purchase currency for the goods sold on the website;
  • Whether there is any sale activity in Hong Kong;
  • Whether there are any distributors and licensees in China and Hong Kong;
  • Whether the defendant has a network of stores selling the goods in China and Hong Kong.

In its decision, the Court of Appeal found it difficult to establish a link between the defendant and consumers since it was unclear which consumers had actually purchased the goods. Unless we take into account all relevant elements mentioned above, internet evidence per se may be not be sufficient to prove that there is likelihood of confusion for consumers.