The shirts weren’t trying to knock off or reference Kentucky Athletics in any way, but that didn’t stop UK from putting legal resources behind their effort. Yet another example of how the legal system is built for the rich.
0: https://www.nytimes.com/2016/04/10/us/-legal-moonshiner-and-...
2. Don't companies have an obligation to defend their trademark or risk not being able to defend them in the future?
He has a show about consumer rights ("Joe Lycett's Got Your Back", which I suppose will be "Hugo Boss's Got Your Back" next season) so it's in his wheelhouse.
The problem is that this question ultimately hinges on a court's judgment, and they can't know in advance what evidence of "reasonable defense of their trademark" will satisfy all the judges in all the cases where this issue is examined.
So from the trademark-holder's point of view, the approach has to be to do everything they can to be seen by the courts to be doing anything necessary to defend their brand; particularly for such a big/valuable brand like Hugo Boss, it's too risky to do anything less.
When you talk to people in these kinds of companies privately, they don't personally care at all if some largely-unrelated small business somewhere has a name that is vaguely reminiscent of theirs, and they'd rather not have to waste time and money taking action against them.
These indignant reactions always happen when a big corporate is seen to be bullying small, defenceless companies over trademarks, but on this topic it's a case of "don't hate the player, hate the game".
There was a time when McDonald's was being a major jerk about trademark lawsuits. Then THE MCDONALD of the the clan MCDONALD had a talk with them about being reasonable. Haven't been as many stupid lawsuits since then . . .
but i have read and learned crazy things like you can't have part of their name in your own products or company names. or again, you can't use their main colors for branding.
ridiculous!
He held on to it for a long time, but I noticed in the last couple of years that it now redirects to www.hugoboss.com. Knowing this particular person I am fairly sure that he would have sold it to them for a pretty penny.
Perhaps there's opportunity to bag the few others and drop them an offer. =)
https://en.wikipedia.org/wiki/American_rule_(attorney%27s_fe...
In cases like this, I wish we had legislation that required trademark holders to defend all alleged violations unilaterally or something, because selectively going after certain cases creates a terrible power imbalance.
If the university feels so strongly about protecting their trademark with regard to apparel, they should have to file cases against everyone who violates it, nor just certain individuals or organizations.
"Hey, we think your use of <x> is a bit too close for comfort. We recognize it's not actually problem but it's in both our interest to avoid trademark dilution issues; let's discuss some minor changes and nail down an agreement".
Then both sides can point to the agreement if someone else tries to use that usage as a defense.
The real issue is not that they're communicating with people to ensure a clear delineation of uses, but that they're doing so in a very aggressive and hostile way and costing companies they do it to a lot of money.
But how does any of us know there’s a way the could handle this in a less hostile way and still be safe before the courts?
Are there examples of other companies doing it substantially better?
All they need is to be able to demonstrate that they take action to protect their mark. If they do so by agreeing license terms that covers reasonable uses that is sufficient.
As for examples: Pretty much any company you don't see in the media harassing companies with similar names. Hugo Boss are being exceptionally aggressive here.
https://assets.publishing.service.gov.uk/government/uploads/...
These Deed Poll forms are produced by any number of paralegal-esque companies and are useful to include when writing to your bank/utility conpany, but that's about it.
https://www.nrscotland.gov.uk/registration/recording-change-...
Edit: Being married to Scots law lawyer I feel obliged to point these things out any time I see a mention of a "UK" legal system... ;-)
Perhaps the next logical step for this comedian is to find a class in which Hugo Boss is not registered and register his own trademark in that class. Then he can give himself permission to use his own name. Or something. I actually have no idea how the rule in the the linked document would be applied in practice. Perhaps in practice they don't care about trademarks if the name is an ordinary name, like "John Smith", for example. Which is almost certainly also a trademark ... I've just checked (https://trademarks.ipo.gov.uk/ipo-tmtext): JOHN SMITH matches a bunch of different trademarks, and if you include JOHN SMITH'S then there are even more of them.
“I [old name] of [your address] have given up my name [old name] and have adopted for all purposes the name [new name].
“Signed as a deed on [date] as [old name] and [new name] in the presence of [witness 1 name] of [witness 1 address], and [witness 2 name] of [witness 2 address].
“[your new signature], [your old signature]
“[witness 1 signature], [witness 2 signature]”
