Last month, Gucci found itself on the losing side of a trademark battle in Japan. The Italian luxury goods company had been in an ongoing dispute with the brand Parodys, owned by Nobuaki Korukawa. Kurokawa makes t-shirts with parodies of famous brands like Chanel, Balenciaga, Adidas and of course, Gucci.
In May of 2021, the Japan Patent Office (JPO) granted Kurokawa’s application for registration of the mark CUGGL. CUGGL was registered in the same all caps serif font used for GUCCI. On first appearance the marks do not appear similar, despite the same in font. The catch is, when the mark appears on t-shirts the lower half of it is obstructed by a streak of paint. Gucci learnt of the mark late, but took immediate steps in opposing the registration before the JPO.
Gucci alleged that Korukawa is attempting to ride on Gucci’s goodwill and reputation with malicious intent. For its claim, Gucci relied on Article 4(1)(vii), (xv), and (xix) of the Japan trademark law. Essentially, Gucci claimed that CUGGL is “identical with, or similar to” Gucci’s well-known trademark and is being used unfairly.
On examination, JPO disagreed with Gucci. JPO acknowledged that Gucci is a well-known and reputed mark but did not find any visual, phonetic or conceptual similarity between the marks.