Comedian Joe Lycett recently announced on Twitter that he has officially changed his name by deed poll to Hugo Boss in response to the designer’s trade mark disputes with small businesses.
The bold move comes ahead of the launch of a second series of the programme ‘Joe Lycett’s Got Your Back’ which sees the comedian set himself up as champion of British consumer rights. After the stunt was revealed on Twitter, it will now come as little surprise to see him pursue the luxury fashion brand Hugo Boss, which was founded in 1924, in the coming series.
Hugo Boss (the designer) has particularly targeted two companies in recent years for use of the word ‘boss’ in their branding. The first, an award-winning Welsh brewery called Boss Brewing, received a cease and desist letter after applying to register its name as a trade mark in relation to classes including beer and alcoholic drinks. ITV reported that the small company had spent £10,000 on legal fees fighting the designer, and critics have been quick to point out the significance of this loss for a small company, in stark comparison to the designer’s sales of approximately 2.7 million euros in 2018. In the end, only two beers, Boss Boss and Black Boss, needed rebranding to ‘avoid conflict and potential misunderstanding’ but while the fashion house may be well within its rights from an IP perspective, poor PR handling of the situation has seen it painted as a Goliath which doesn’t do much for the brand as a whole.
The second PR disaster blew up over registration of the brand Dark Girl Boss by Khadijah Ward, a writer and entrepreneur advocating for female empowerment and intending to launch the brand and book of the same name on a variety of merchandise including clothes and fragrances. In an interview on BBC Sounds, Khadijah says she was ‘devastated’ by the letter she received from Hugo Boss warning her to delete all social media accounts in that name and withdraw her application immediately or face liability for legal costs. She has since been allowed to register her trade mark but again, the company’s heavy-handed approach is sparking public outrage thanks to Joe Lycett’s Hugo Boss spotlight.
Hugo Boss attempted to make light of the comedian’s action, tweeting: ”We welcome the comedian formerly known as Joe Lycett as a member of the HUGO BOSS family.” For now though at least, it looks like the former Joe Lycett has had the last laugh. Making the most of the social media storm surrounding his tweet, he has since taunted Hugo Boss with the release of a brand new product under his new name and registration of the trade mark ‘Boss La Cease en Desiste’ for class 10 goods, specifically bandages. He quips: “FYI the opposition period for this ended on 27 February – did your cease and desist get lost in the post?!”, leaving the company to lick its wounds and fearing worse may yet be in store when the series airs on TV. That said, Hugo Boss seems to have overcome the much bigger PR obstacle of its eponymous founder’s past Nazi affiliations, famously supplying the soldiers’ uniforms in World War II, so perhaps this is just a wrinkle to be smoothed over on the way to another century of fashion design.
In any case, let us hope a valuable lesson has been learnt – PR and legal departments need to work together, rather than in a vacuum, and in order to avoid self-inflicted reputational damage, big brands should think twice in future about threatening legal action, whether technically in the right or not.
This article has been co-written with Mary Clare Palmer, a trainee solicitor in the commercial, IP and IT team.