Anita Gogia is a IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.
On May 25, 2021 the Japan Patent Office (JPO) granted Nobuaki Kurokawa a trademark for his apparel brand named “CUGGL” for class 25 (clothing and footwear). This year, when the t-shirt design for CUGGL was released, the Italian fashion brand Gucci tried to get the trademark cancelled.
Fast forward a few months, on July 26, 2021, Gucci filed an opposition against the “CUGGL” mark with the JPO. Gucci argued that CUGGL t-shirts would confuse customers because of the font and style of the design. Gucci cited Article 4(1)(vii), (xv), and (xix) of the Japan trademark law in support of their claim.
Gucci claimed that Kurokawa obtained the trademark with malicious intent to take advantage of the luxury Italian brand’s goodwill and reputation as customers would recognize his design to say “GUCCI” even when they can only see the top half of the word. Even though half of the word “CUGGL” is covered with hand drawn paint, anyone familiar with Gucci’s brand might assume at first glance that the shirt says “GUCCI” underneath the paint.
Unfortunately for Gucci, its claim was not successful. As of July 12, 2022, the JPO found that the two brands were distinct and dismissed Gucci’s claim. Even though the decision makers recognized Gucci’s popularity and reputation, they were not convinced of a resemblance between Gucci and CUGGL based on visual, phonetic, and conceptual considerations. Overall, the low degree of similarly, according to the JPO, is not enough to accept that consumers would be confused between Gucci and CUGGL.
Kurokawa has other successful trademarks and pending applications for brands that potentially confuse consumers (for example, “AZIDES” and “PAPAGORIRA”).
Some progressives believe that the JPO’s decision against Gucci is a win because large companies have manipulated the law to prevent harmless parodies of their brands and the public would not be confused by such parodies. This decision illustrates that the result of a trademark infringement allegation is not so predictable in Japan as it may be in other jurisdictions.
