GUCCI lost trademark lawsuit to Japanese CUGGL. Analysis by Eleonora de Gray, Editor-in-Chief of RUNWAY MAGAZINE.
Japanese designers and entrepreneurs are known for their sense of humor and parody. In 2021 Nobuaki Kurokawa registered CUGGL trademark in Japan (trademark registration number 6384970), a brand name to use on apparel. The created logo was half painted with pink paint. This parody had quite a harmless way to humor the public reverence to the logos and the brand names. T-shirts with the CUGGL logo were presented in online stores for the price 2,500 Japanese Yen, which is equal to €18. No offence intended, just a parody, and humor related to social behavior, as Nobuaki Kurokawa explained.
Curiously Gucci decided to attack Nobuaki Kurokawa and tried to cancel his trademark. Gucci argued that customers would be confused by the half-obscured CUGGL t-shirts, devaluing its own trademark and brand. Gucci also claimed that the trademark was sought with malicious intent to “freeride” on Gucci’s “goodwill and reputation.” Gucci lost this lawsuit (Decision Objection 2021-9002484).
Japanese Patent Office conclusion: “Patent Office conclusion: “CUGGL”, which hides the bottom of the letters with painting, is not likely to be confused with “GUCCI”.
“The JPO states as follows, even if the Trademark is used for the designated goods, traders and consumers will not associate or recall the Cited Trademark, It concluded that there was no risk of confusion as to the origin of the goods, as if they belonged to the business of those with whom it had some organizational relationship…
It can be easily recognized that the Latin characters in the composition of the Trademark consist of the characters “C, U, G, G, L”. The figures in the composition are not recognized as representing specific things or meanings, and there is no reason to say that they are familiar, so there are no specific names or concepts. Furthermore, the Latin characters of “CUGGL” are not words that are listed in dictionaries, etc., and are recognized as representing the quality of goods or a specific meaning in relation to the designated goods of the Trademark. , I can’t find anything that should be said to be familiar. Therefore, the Trademark gives rise to the pronunciation of “CUGGL” corresponding to the Latin letters of “CUGGL” in its composition, and does not give rise to a particular notion.”
Newsletter of Japanese attorney office defending Nobuaki Kurokawa.
Strangely enough Gucci disregarded several facts:
– GUCCI logo is in Serif font, Capital letters, CUGGL logo has different font;
– this is a parody with regards to the social behavior and attraction;
– this is another ready-to-wear concept, so well promoted by Gucci;
– not so long ago Gucci invested millions, engaged, promoted, a real counterfeit goods tailor from Harlem Dapper Dan to created collections, to participate in his atelier, even made him to receive CFDA (American Fashion Federation) lifetime achievement award for his “deeds”. Dapper Dan spent 30 years of his life taking logos of Louis Vuitton, Fendi and other luxury brands and put them on apparel designed for the local gangsters, and rap singers. Gucci tried to explain the criminal actions of Dapper Dan as an art. Read more about it HERE;
– the price range is not compatible. GUCCI t-shirt is €650, CUGGL t-shirt is €18 (2,500 Japanese Yen).
The Japanese Patent Office (JPO) did not find enough resemblance, whether visual, conceptual, or phonetic, that consumers would be confused about who they are buying Gucci product (€650) with Cuggl product (€18).
So what moved Gucci to file this lawsuit against harmless parody and trying to pass it as a counterfeit and possible confusion with their brand? What exactly they are afraid of? Talent? Parody? Art Concept Gucci is not capable of? On one hand they are praising a counterfeit concept and investing in it, on another they are hitting on a small Japanese entrepreneur, who cautiously created his own logo.
The Japanese Patent Office (JPO) concluded that GUCCI and CUGGL were sufficiently distinct, according to a summary by a law firm not involved in the case. It dismissed Gucci’s trademark claim August 15, 2022.
No matter how many studies show that a certain number of people can read words when only their top half is visible, and imagine the rest. Even the bottom half of Cuggl is concealed, there’s no chance that many consumers will mistake parody for €18 with luxury brand for €650. Where’s a ground for trademark infringement? Brands can’t be sued for imagination of others, or for ow others sees you.
The ruling against Gucci in Japan is a total win for intellectual-property progressives who argue that companies have distorted the law to block harmless parodies and other remixes of their brands. “Among the world’s five biggest patent offices (including the US, Korea, China, and Europe), [Japan] runs the fastest examinations,” Leo Lewis wrote in the Financial Times. “It has done this, in part, by accepting that, sometimes, the public is not confused by parody.”
Were you confused by any of this parody? There’s a huge difference between cheap knockoffs and clever parodies of the brand. Nobuaki Kurokawa created many successful parodies of Chanel, Adidas, Patagonia, Champion, Puma, and Balenciaga.
And let’s not forget that CEO of Kering Luxury Group Francois-Henri Pinault, owner of Gucci brand, and CEO of Gucci Marco Bizzarri so keen to drop on the world counterfeit disease concept, how come they came down on parody? They happily contributed to the $600 billion counterfeit production sold every year. thanks to the guys like Dapper Dan, in whom they invested several million dollars.
Read story about Dapper Dan and Gucci investment in counterfeit knockoff designer HERE.
Aren’t we tired of hypocrisy?
Eleonora de Gray, Editor-in-Chief of RUNWAY MAGAZINE