Member Article

What are we to make of the comedian who changed his name to that of a well-known brand?

A British comedian by the name of Joe Lycett recently changed his name to Hugo Boss – he did this formally, as in by deed poll.

Hugo Boss is, of course, a very well-known fashion brand. The company, which was formed in Germany in 1924 and named after its founder, made uniforms for the German army during World War 2 but changed its focus, somewhat, in the post-war years.

Lycett’s stunt certainly made the news! But why did he change his name? His motivation was seemingly to protest or draw attention to the fact that Hugo Boss has been sending cease-and-desist letters to small businesses who use the name “Boss”. He gave examples of a brewery and a charity that had been affected. Lycett said that these actions had cost small businesses“thousands in legal fees and rebranding.”He contended that he would like Hugo Boss “to stop doing this, because no-one is confusing these two things.”He added that he would“really like them to give them their money back and promise to stop – and an apology would be nice.”

This story raises some interesting issues. The first is that brand owners increasingly need to take account of the fact that the media has a real appetite for IP enforcement stories. Cease-and-desist letters are often dissected and pilloried in the media. This has led to certain companies becoming quite nervous and sending decidedly soft and “cool” cease-and-desist letters, seemingly in the hope that they won’t be painted in too much of a negative hue when the story hits the media. This development has certainly complicated trade mark enforcement.

The second issue relates to the question of what Hugo Boss (formerly known as Joe Lycett) intends to do with his new name. Does he intend to use it as a trade mark? If so, it is important to remember that trade mark law does provide an “own name defence”. In South Africa, this defence is found in section 34(2)(a)of the Trade Marks Act, 1993, which provides that a defence to a trade mark infringement claim is “any bona fide use by a person of his own name, the name of his place of business, the name of any of his predecessors in business, or the name of any such predecessor’s place of business.”Similar provisions are found in trade mark law in other jurisdictions.

Section 34(2)(a)is a fundamental defence: everyone must be entitled to use their own name. There are, however, limitations. The use must be“bona fide”. The proviso to the section states that the use must be consistent with “fair practice”. It further states that the defence will not apply in the case of a company name where the company was registered after the date of registration of the trade mark.

According to a UK decision, the“bona fide”element will be missing if the person raising the defence most likely knew of the registered trade mark, and knew that any use of that trade mark would cause confusion. In the South African case, Button v Jenni Button (Pty) Ltdthe court said thatbona fidemeant that the use must have been without the intention to deceive anybody, and without the intention to make use of the goodwill of another.

It seems very unlikely that any commercial use that Hugo Boss (formerly Joe Lycett) might make of the name Hugo Boss in relation to products (and not just clothing and perfumery) would be regarded asbona fide, as there would inevitably be confusion, confusion that he could surely have foreseen. Use as a stage name for comedy (entertainment services), on the other hand, might be seen in a different light.

So, were Joe Lycett’s efforts an exercise in futility? Perhaps not, Joe Lycett has certainly shone a spotlight on what is sometimes referred to as “trade mark bullying”,and he has certainly raised his own profile. From that perspective, Joe Lycett’s efforts were arguably something of a branding masterstroke!

Will others follow Joe Lycett’s lead? Will we see a rush of change-of-name applications? You may find yourself meeting people with names like Levi Strauss, JP Morgan, Philip Morris, Walt Disney, Louis Vuitton, Aston Martin, Thomas Cook…

Reviewed by Gaelyn Scott, head of ENSafrica’s IP department.

Delene Bertasso Senior Associate IP [email protected] +27 83 399 6172