Imitation is the highest form of flattery”, however, what about in the circumstances where the subject of a parody are trademark owners? Most often, trademark owners find it difficult to accept that it is a compliment.
E.g., the case between Gucci v Cuggl 2022; Gucci does not see the compliment.
Last month, I asked the question in a brief post on Linkedin, “How do you feel about brand memes or parodies as a trademark?” And the response I received is recapitulated below. But first, a summary of the case from both sides:
Gucci v Cuggl Opposition case no. 2021-900284
Cuggl, (in Japanese is pronounced ‘kyuguru’), was originated by Osaka-based impresario Nobuaki Kurokawa, who sells garments, namely t-shirts, parodying illustrious brands. He trademarked the name CUGGL and GUANFI, in October 2020, with a pink hand-painted line, in class 25 for use on apparel, footwear, headwear.
Nobuaki Kurokawa, CEO of CUGGL, applied to the JPO and they granted protection of this mark and published it for opposition on 25 May 2021.
Please note: CUGGL, printed the mark above on its garments which is different from what was actually registered.
Gucci, filed an opposition with the Japan Patent Office (JPO) on 26 July 2021, and claimed the following:
- The opposed mark [should] not be approved for registration since [Gucci felt it was] 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”.
- 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 trade mark 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).”
- “Malicious intent to free-ride [on the] goodwill and reputation” of Gucci, which is indicated by its use of a pink painted line across the lower part of the “CUGGL” term to the extent consumers might view it as “GUCCI”.
On 12 July 2022, the JPO dismissed the opposition argued by Gucci against Japan trademark registration no. 6384970 for the mark “CUGGL” by finding less likelihood of confusion with “GUCCI”.
The details were that the JPO Opposition Board disclosed that there was a remarkable degree of popularity and reputation of the opponent’s “GUCCI” mark.
However, what is interesting is that when analyzing a mark on visual, phonetic, and conceptual points of view, the Board did not find any resemblance between “GUCCI” and “CUGGL” resulting in a low degree of similarity of the mark.
The JPO decided that consumers would not misconceive the source of goods, therefore the Board did not find the allegations submitted by Gucci compelling enough to conclude any malicious intentions to freely-ride on the reputation of Gucci or to constitute an unfair-competitor in the Japanese market or to damage Gucci.
Did you know that Mr Kurokawa is no stranger to brand parodies? Cuggl is not the only brand Mr Kurokawa parodies. T-shirts which mimic Chanel and Adidas, have been re-worked … and apparently there is more!
A Successful Parody case (based on an infringement and not an opposition).
Image: Courtesy of Dr Ashley Roughton
For the full case please click here: https://www.thefashionlaw.com/resource-center/cases-of-interest-louis-vuitton-malletier-v-haute-diggity-dog/
Parodies, (Memes or satirical reworkings of famous brands), are not unusual. They appear in many forms i.e., on garments. Parodies can be understandably concerning for owners of well-known brands, particularly if the reworking portrays the brand in an adverse way. The question is, do all reworkings violate the law? No, there are certain circumstances in which reworkings are within the law, even though the trademark owner is aggrieved; in this case, the JPO decided that Cuggl was within the law. I’m predicting, Gucci will not take this defeat lying down and will return with its full arsenal on display. We await part 2.
Written by Joanna Ampratwum-Danquah, PQ-Trade Mark Attorney & IP Solicitor Project Consultant, Manton Legal Consultancy and Chair of the Empowerment Group, IP&ME under IP Inclusive.