Is that shirt a GUCCI or a CUGGL?
Gucci vs. Cuggl
In 2021, a seemingly innocent trademark registration was granted in Japan for a figurative mark ‘CUGGL’, consisting of the word ‘CUGGL’ with pink paint underneath. The application was filed by Nobuaki Kurokawa, the owner of a clothing company which mainly sells t-shirts containing parodies on famous brands.
This trademark CUGGL was no exception. Soon after registration, Nobuaki Kurokawa started selling t-shirts with prints of the registered mark. But where the pink paint was positioned slightly higher. The result was that only the top half of the word ‘CUGGL’ was still visible, which is identical to the top half of the word ‘GUCCI’. The font was also near-identical, the reference to GUCCI is abundantly clear.
Unsurprisingly, the Italian fashion brand was none too pleased about this parody of their brand. Legal proceedings were initiated before the Japanese Patent Office, as Gucci sought to cancel the contested trademark registration. In doing so, they argued that consumers could be confused about the commercial origin of the goods, and that Nobuaki Kurokawa maliciously intended to free-ride on the goodwill and reputation of their luxury brand.
Gucci lost Trade Mark battle
The Japanese Patent Office didn't agree with Gucci and dismissed their claims. According to the JPO, consumers would not confuse the two trademarks as there were sufficient visual, phonetic and conceptual differences. Because of the low degree of similarity between the two signs, the JPO also found that no malicious intent to free-ride existed.
Proponents of parody rights will be happy with this outcome. It is true that in case of clear parodies the public is unlikely to be confused about the commercial origin of the goods. On the other hand, trademark owners should be able to protect the reputation and distinctiveness of their trademark. A fine balance must therefore be struck. Contact us here for additional information.
Kurokawa's other Trade Mark battles
Nobuaki Kurokawa also features other well-known brands where the public may be confused about the origin. Consumers are most likely to think of the well-known footwear, clothing & accessores brand 'Adidas' when they see 'Azides'.
'Papagorira' evokes confusion with outdoor clothing brand 'Patagonia'.