Imitation marks compliment or an insult?

Imitation may be viewed as the highest form of flattery. However, where the subject of such imitations are in relation to trade marks, trade mark owners find it challenging to accept it as a compliment.

Gucci v Cuggl Opposition case no. 2021-900284

The brand Cuggl originated from Japan and is pronounced ‘kyuguru’. Cuggl sells garments, namely t-shirts, imitating illustrious brands. He trade marked the name CUGGL and GUANFI in October 2020, with a pink hand-painted line under class 25 for use on apparel, footwear and headwear.

The CEO, Nobuaki Kurokawa, is known for mimicking famous brand names.

Gucci filed an opposition with the Japan Patent Office (JPO) and claimed the following:

  1. The opposed mark should not be approved for registration since Gucci felt it would cause consumer confusion because of the similarity and likelihood of confusion with famous fashion brand “GUCCI”.
  1. The published mark is likely to cause damage to public order or morality, cause confusion in connection with the goods or services pertaining to Gucci’s business; and it is similar to, a trade mark which is well known among consumers in Japan which is being used for unfair purposes such as gaining unfair profits and causing damage to Gucci’s brand.
  2. “Cuggl’ is free-riding 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”.

JPO decision

The JPO dismissed the opposition from Gucci against the trade mark registration no. 6384970 “CUGGL” on the ground that there is less likelihood of consumer confusion. When analysing the mark on a visual, phonetic, and conceptual point of view the JPO did not find any resemblance between the marks resulting in a low degree of similarity.

The JPO concluded that consumers would not misconstrue the origin of goods and therefore the allegations presented by Gucci were not found to be convincing enough to result in malicious intentions to unfairly advantage from the goodwill established by Gucci in the Japanese economic market.

By Zohaib Tahir, an LLM student at Solent University

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