Background
The Japan Patent Office (JPO) dismissed an opposition from Italian fashion brand Gucci for the registered mark “CUGGL”.
Cuggl is a Japanese brand that was created by Nobuaki Kurokawa that sells clothing, mainly t-shirts that imitate luxury brands. He trademarked the marks “CUGGL” and “GUANFI” under Class 25 for use on apparel, footwear, and headwear. The JPO granted protection to these marks.
Gucci opposed the mark “CUGGL” and claimed that it should not be approved for registration because there is a significant similarity between the marks and there is a likelihood of confusion with the Gucci brand.
Gucci further argued that the mark is likely to cause confusion for consumers in Japan and aboard who are familiar with the Gucci brand as the goods can be seen as identical or similar. Therefore, the mark could be used for unfair purposes as Cuggl can gain unfair profits due to the potential confusion which can cause damage to the Gucci brand.
Gucci also claimed that there was malicious intent to free ride on their goodwill and reputation. This was indicated by the pink painted line across “CUGGL” which consumers could see as “GUCCI”.
JPO decision
The JPO dismissed the opposition that was argued by Gucci, as the mark “CUGGL” is not likely to be confused with the mark “GUCCI”. The JPO recognised that there is a significant degree of popularity and reputation of the “GUCCI” mark. However, it was said that when the two marks were analysed and compared on a visual, phonetic, and conceptual scale there was no resemblance between the marks which meant that there is a low degree of similarity.
Moreover, the JPO decided that it is unlikely that consumers would mistake one brand for the other. Consequently, the allegations of malicious intent to ride on the coat tails of Gucci or to damage the Gucci brand within the Japanese market were rejected by the JPO.
Therefore, the JPO dismissed the entire allegation and concluded that the opposed mark is valid.
By Abhiraj Aujla, an LLM Student from Solent University
