[tomhoward]

> His accusation is that Hugo Boss are going well beyond reasonable defense of their trademark

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".

[vidarh]

You have a much less aggressive option:

"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.

[tomhoward]

I don’t know anything about the specific cases.

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?

[vidarh]

There is no requirement to be hostile. They can always go for the hostile option if the friendlier approach doesn't work.

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.