On 29 April 2016, the company ‘Big Food Catering Industries di Paride Cocozza’ filed an application with the Italian Patent and Trademark Office (UIBM) for the trade mark ‘Il Boss dei Panini’ (The Sandwich Boss), requesting its registration for catering services. The name is ironic, it winks at a well-established trend (see ‘Cake Boss‘, ‘Party Boss‘) and serves to say, light-heartedly, ‘we’re good at what we do!’

Il Boss dei Panini vs. Boss: the case

But not everyone is smiling. The well-known German fashion house Hugo Boss Trade Mark Management GMBH & Co. filed an opposition to try to prevent the registration of Big Food’s trademark, invoking the possibility of a likelihood of confusion (under Article 12(1)(d)) with its own trade mark BOSS, which is also registered in the EU for catering services and for which it also claims increased distinctiveness as a result of use on the market.

It was in 2020 when the UIBM, having heard the arguments of both parties, agreed with Hugo Boss and by allowing the opposition rejected the trademark application. According to the Examiner, in fact, the trademark ‘Il Boss dei Panini’ may create confusion with BOSS.

Many perplexities remain, however, upon reading a decision that is contradictory to say the least: on the one hand, it considers that the BOSS trademark does not enjoy enhanced distinctiveness for catering services, and that the similarity between the signs – from all points of view – is medium-low, while on the other hand, it states that in order to reach a conclusion of similarity, the degree of distinctiveness of the common element (Boss) must be taken into account; the more distinctive this is, the greater the degree of similarity for each aspect of the comparison (visual, phonetic and conceptual).

Revenge of the Boss dei Panini: Hugo Boss does not monopolise the word ‘boss’

Big Food does not give up: it lodges an appeal with the Board of Appeal of the UIBM, which by decision of 18 October 2021 overturns the fate of the trademark Il Boss dei Panini, rejecting Hugo Boss’s opposition. Among other reasons, the Board of Appeal deems that the word ‘Boss’ should be regarded as a term of common use, which is weak in terms of distinctiveness, and that the addition of further elements (such as “Il” and “dei Panini”) is sufficient to avoid the risk of confusion for the public.

In essence, according to the Commission, Hugo Boss cannot monopolise such a generic word, which has now entered into pop lingo even in the culinary sphere, all the more so since it has not proven increased distinctiveness for the services claimed by its trademark.

Boss’s counter-move, banking on brand ‘notoriety’

Hugo Boss, however, does not agree. The fashion house decides to appeal to the Supreme Court (Corte di Cassazione), first of all contesting the fact that the trademark ‘BOSS’ was defined as a weak trademark, since this cannot be considered descriptive or allusive in the food sector. It then adds that the Board of Appeal allegedly underestimated the ‘notoriety’ of the brand, as well as its patronymic nature, and that it resorted to unproven ‘well-known facts’, such as the alleged common perception of the word ‘boss’.

Hugo Boss takes the lead again: the Supreme Court upholds the appeal. The judges state that the Board of Appeal should have assessed certain aspects better, as it could not ignore the patronymic character and the possible association with the well-known fashion brand, and even added a reference to the risk of dilution (Art. 12(e): “in view of the fact that the later trademark would, without due cause, take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark”.

However, it should be noted that the opposition that gave rise to the case was based only on the likelihood of confusion between trademarks (Art. 12 par. 1 lett. d), and not on the reputation of the earlier trademark. Therefore, correctly neither the UIBM nor the Board of Appeal took into account the alleged reputation of the earlier mark.

The Appeals Commission: ‘No risk of confusion’

The Board of Appeal, hearing the case again on remand by the Supreme Court, takes note of the findings but confirms its position: in the trademark ‘Il Boss dei Panini’ the word in conflict will not be perceived as patronymic, but as an ironic loanword. And above all: there is no confusion, no benefit, so we can safely assume that nobody would think that Hugo Boss had started selling sandwiches.

Moral of the story? On 25 February 2025, the Board of Appeal again confirms that the trademark Il Boss dei Panini is safe, and can proceed to registration.

But is it really over?