Fashion designer from Liverpool who uses Scouse slang 'Boss' on his clothes receives threatening legal letter from Hugo Boss after applying for trademark

An artist-turned-fashion-designer from Liverpool who uses the Scouse slang word 'Boss' on his merchandise is facing a l legal battle against German clothing giant Hugo Boss.

Father-of-one John Charles was hit with a threatening legal letter from lawyers representing the luxury fashion brand after he applied to trademark his 'Be Boss, Be Kind' clothing and hat designs.

The slogan, containing the word 'Boss', which in Scouse slang means 'very good' or 'great', was used by Mr Charles' at the end of his online art lessons - which he launched during lockdown.

The sign-off proved so popular, that Mr Charles, from Huyton, Liverpool, decided to create merchandise with the slogan on it.

But last week, after applying to trademark his designs, he received a letter  from solicitors Simmons & Simmons, who act for the Hugo Boss group of companies.

Father-of-one John Charles was hit with a threatening legal letter from lawyers representing the luxury fashion brand after he applied to trademark his 'Be Boss, Be Kind' clothing and hat designs

But last week, after applying to trademark his designs, he received a letter from solicitors Simmons & Simmons, who act for the Hugo Boss (pictured: A Hugo Boss store) group of companies

The letter states that they will be filing a 'Notice of Threatened Opposition' against the application on behalf of their client and the company wants to block his application.

However it says the company would drop the action if Mr Charles withdraws his application and stops selling items with the word 'Boss'.

They later told the BBC that the would be 'open for a mutual agreement' and promised to contact Mr Charles directly.

Meanwhile Mr Charles, who is best known in Liverpool for painting some of the city's most iconic buildings and figures, said the money earned from the clothing venture would help pay towards his daughter's Emmy future.

The 10-year-old helped Mr Charles run his online art classes for children - in which they used the phrase 'Be Boss, Be Kind'. 

He told the Liverpool Echo: 'One of our biggest mottos was at the end of each class, we would always say to everybody 'Be Boss Be Kind'. 

'On the back of that a lot of parents were asking about merchandise so we decided to do hoodies, caps and t-shirts with our logo 'Be Boss, Be Kind'.

'To make sure we did it as professionally as possible we've paid to have our logo trademarked as well.

'Scousers always say boss, it's another way of saying nice. Scousers have said that for years, way before I was born.'

Mr Charles, who is best known in Liverpool for painting some of the city's most iconic buildings and figures, said the money earned from the clothing venture would help pay towards his daughter's Emmy future

Hundreds of people have since spoken out in support of John.

Many have since said that it's 'easy to see' that Be Boss Be Kind has no connection to the German fashion giant. 

Hugo Boss: A luxury fashion brand which once produced clothes for the Nazis before going on to become a high street name 

Fashion brand Hugo Boss was founded by Hugo Ferdinand Boss in Germany in 1923, with its first workshop opened a year later.

Mr Boss, who served in the military in World War One, later became an active member of the Nazi party in the 1930s.

The company produced clothing for the Nazis during their time in power.

The fashion retailer says that during this period the factory employed 140 forced labourers (the majority of them women) and 40 French prisoners of war.

In 2011 the group said that when they became aware of this fact, it made a contribution to the international fund set up to compensate former forced labourers.

After World War Two and the founder's death in 1948, Hugo Boss started to turn its focus from uniforms to men's suits.

It has since become a global fashion brand with more than 2,000 stores world-wide.

The company was recently involved in a number of spats with companies over naming rights.

The brand sent a legal letter to charity Dark Girl Boss - which aims to encourage women and girls to be economically independent and start their own businesses.

The company later backed down.

It also sent a legal letter to a Swansea based brewer called Boss Brewing over the use of the name Boss.

Though the company are still having to change their name, according to Wales Online, the incident became national news after comedian Joe Lycett changed his name by Deed Poll to Hugo Boss for a month in protest.

Other residents also agreed with John that the word 'boss' is a Liverpool saying.

On Facebook, Anne Porter commented: 'Boss' is a word 9/10 Scousers use with no connection to Hugo.'

PoliteScouser added: 'Boss is a Liverpool slang word for the best.

'He has as much right to use the word from his local dialect as any other person place or thing.' 

A letter from Simmons & Simmons, who act for the Hugo Boss group of companies (collectively 'Hugo Boss'), said their client was 'concerned to learn' about the recently filed UK trade mark application for 'Be Boss, Be Kind.'

It also referenced the Trade Marks Act 1994, summarised the technical grounds for the refusal and stated that despite their client's concerns in relation to the trademark application, their client wishes to agree an amicable resolution of the matter if possible.

The letter, dated September 22, in part reads: 'Our client has built up a substantial and valuable goodwill in the United Kingdom in connection with 'BOSS.'

'Use of the mark which is subject of the Application is likely to deceive the public into believing that your goods and/or services are those of Hugo Boss, that you are authorised by or connected to Hugo Boss, or that Hugo Boss has endorsed your activity under your mark.

'As a result the goodwill of Hugo Boss would be damaged.

'Use of the mark that is subject of the Application would therefore also likely amount to passing-off.'

It continued: 'We will shortly be filing, on behalf of our client, a Notice of Threatened Opposition (Form TM7A) against the Application. 

'The primary reason for filing this form is to extend the opposition deadline by one month so as to allow time to resolve this matter and hopefully to avoid formal opposition proceedings.'

The incident follows a similar naming battle between Hugo Boss and a Welsh brewery last year. 

In August 2019, multi-award winning brewery Boss Brewing, based in Swansea, applied to own the trademark of its name in a procedure that should usually cost £300.

But owners Sarah John and Roy Allkin ended up in a four-month legal battle with Hugo Boss who challenged the application.

The ended up forking out a near £10,000 sum in solicitors' fees by the timeit was all resolved.

In March this year, the story hit the news again after comedian Joe Lycett officially changed his name by Deed Poll to Hugo Boss as an act of solidarity with small businesses who have been sent similar letters by the fashion brand.  

In March this year, comedian Joe Lycett officially changed his name by Deed Poll to Hugo Boss as an act of solidarity with small businesses who have been sent similar letters by the fashion brand

Hugo Boss told the BBC: 'As an open-minded company we would like to clarify that we do not oppose the free use of language in any way.

'We accept the generic term 'boss' and its various and frequent uses in different languages.'

The company, who often style themselves as simply 'Boss', added: 'We welcome the comedian formerly known as Joe Lycett as a member of the Hugo Boss family.'

The comedian, who hosts BBC One's The Great British Sewing Bee, changed his name back to Joe Lycett in April.

He said in a post on Twitter: 'Well I have decided to go back to the Lycetts. They don't target small businesses, if you ignore the time mum posted a dump to the local florist.'

Despite all of the comedian's efforts Boss Brewing are still being made to change their name, Wales Online reports.