Gucci loses trademark lawsuit to Japanese firm known for parodying logos

Italian fashion giant Gucci has lost a trademark lawsuit to a Japanese T-shirt manufacturer that has a track record of mimicking internationally renowned logos.

This is despite the specialist patent lawyer who won the case on behalf of Osaka-based clothing firm Parodys admitting he feels the present law needs work.

In July 2021, Gucci filed an opposition motion against Parodys, owned by one Nobuaki Kurokawa, after noting that he had trademarked the name “CUGGL” in October 2020. The trademark permitted Kurosawa to apply the name to clothing, belts, footwear and athletic clothing.

The letters CUGGL appeared in a similar font as those used in Florence-based Gucci’s logo and with similar spacing. However, Kurosawa’s firm used them with a thick, coloured stripe obscuring the bottom half of each letter.

The complaint filed by Gucci was that the stripe obscured parts of the letters that would have revealed them to read “CUGGL”, and that, given Gucci is an internationally famous brand – it was founded in 1922, has 500 directly managed stores around the world, including 97 in Japan – anyone seeing only the top halves of the letters would assume they made up the word Gucci.

In July, however, the Japan Patent Office ruled that the CUGGL trademark is “not likely to be confused with GUCCI”, nor that it might have “some economic or organisational relationship with the petitioner”.

Masaki Mikami, founder of Marks IP Law Firm, said he was confident that he would win the case on behalf of Kurokawa, despite him losing an earlier, similar patent case.

“It is unlikely that Japanese consumers would connect the term ‘CUGGL’ with ‘GUCCI’,” he said. “I do not think the ‘GUCCI’ logo has been used with a painted stripe. If so, then there is no reasonable likelihood of confusion.

In addition, he said, the words do not have the same sound when spoken.

Under Japan’s trademark law, Mikami said, an image can only be prohibited when it causes confusion with a famous brand, so if a consumer does not believe that a product is a genuine product of a well-known brand, then it cannot be banned from sale.

It could be argued that the patent office’s decision is a curious one given the concerns frequently expressed by Japanese entities believing that their products have been mimicked in foreign countries.

On September 8, the Yomiuri newspaper reported that the government of Ishikawa prefecture had demanded that the national government act after Ruby Roman grapes were found being sold in South Korea.

Growers in Ishikawa prefecture took 14 years to perfect this strain of grapes, which are prized for their deep red colour and, with a sugar content of at least 18 per cent, sweet taste. A single bunch of Ruby Roman grapes sold for a record 1.5 million yen (US$10,500) in the first auction of the year in July.

Growers claim that grape vines were “spirited out of Japan”, with a genetic test on grapes bought in Korea confirming that they were genetically identical to the Japanese variety.

Unfortunately for the Japanese growers, a South Korean firm was the first to register the name and variety of the grapes, making it impossible for the Japanese authorities to demand that sales be halted.

There are countless other examples of Japanese claims that their know-how has been purloined, such as accusations that the advanced technology that went into its “bullet trains” was subsequently copied by China.

Fishermen from Japan’s Kyushu island have long complained that their livelihoods are being undermined by cheaper clams that are imported from Korea and China and repackaged as being “from Kumamoto”, a city on the island.

Carmaker Toyota is reported to be unhappy with the striking similarities between its Land Cruiser and the Hengtian L4600, which is made by a manufacturer in China’s Hubei province, while home furnishings store Muji has pursued legal action against what it considers to be copycats in China.

Some in Japan’s beef industry are also said to worry over the DNA of its “wagyu” cattle falling into the hands of unscrupulous foreign breeders who could attempt to pass it off as coming from Japan.

Given Japanese firms’ genuine concerns, one might have expected patent officials to lean more towards Gucci’s point of view.

A straw poll of half a dozen friends and colleagues resulted in every single one of them identifying the obscured “CUGGL” logo as that of Gucci.

“In my personal opinion, the law should prohibit such mark when consumers associate it with [a] famous brand,” Mikami says, even if consumers are perfectly aware that they are not buying a brand-name item but a knock-off.

Mikami adds that Parodys has not had it all its way in the courts. While it won a case brought by US-based athletics clothing brand Champion over items displaying the Champion logo’s distinctive “C” that had been inverted and superimposed with a cat’s face, it lost a similar case instigated by Lacoste.

The French sports and leisure-wear brand objected when Parodys began selling clothing bearing an image of an upside-down crocodile above the word Ocosite, in a similar font as that used by Lacoste.

Parodys has not replied to messages from the Post asking for comment.

A spokesman for Gucci in Tokyo declined to comment.

Mikami is of the belief that while the company does not have the right to appeal against the Japan Patent Office’s decision, it can file an invalidation action. He expects Gucci to make that move in the coming months.