With a controversial decision issued on 2022 July 12th, the Japanese Trademark Office (JPO) approved for registration the trademark application for registration for “CUGGL” on clothing and footwear in Class 25.
Let us see the background of the case and try to shade some light on this case.
In October 2020, Nobuaki Kurokawa, an Osaka-based entrepreneur who sells t-shirts parodying famous brands, filed the trademark application for “CUGGL” with a hand-painted line in pink, for use on clothing, footwear, headwear, and apparel in class 25. See herein the specimen.
The Italian fashion house filed an opposition with the JPO on July 26, 2021, and argued that the opposed mark shall not be approved for registration since in contravention of Article 4(1)(vii), (xv), and (xix) of the Trademark Law especially because of the similarity and likelihood of confusion with famous fashion brand “GUCCI”.
Gucci claimed that the published mark is likely to “cause damage to public order or morality” “cause confusion in connection with the goods or services pertaining to [another party's] business;” and “is identical with, or similar to, a trademark which is well known among consumers in Japan or abroad as that indicating goods or services pertaining to a business of another person, [and is being] used for unfair purposes (referring to the purpose of gaining unfair profits, the purpose of causing damage to the other person, or any other unfair purposes).”
GUCCI claimed the opposed trademark application was filed in bad faith to take advantages of the Gucci reputation, in a manner of hiding the lower part of the term “CUGGL” by a pink painted line to the extent consumers could recognize it as if “GUCCI”. In fact, the registrant promotes T-shirts bearing the opposed mark with the most part of the term hidden.
The JPO Opposition Board recognized the remarkable degree of popularity and reputation of the opponent's “GUCCI” mark. However, at the same time, JPO did not find a resemblance between “GUCCI” and “CUGGL” from visual, phonetic, and conceptual points of view.
According to the JPO, the similarity level was still too low to mislead the consumers about the source of goods, therefore the Board did not find the allegations submitted by Gucci enough convincing to confirm the applicant malicious intention to free-ride the reputation of Gucci and to constitute an unfair-competitor in the Japanese market.
On the base of the above, the JPO approved the trademark application for CUGGL.
The JPO's decision is quite controversial and shows that the JPO criteria are not necessarily straightforward as GUCCI was expecting.
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