Sometime during the depths of the pandemic, when the legal nuances of parody, patent approval and provocative pink sploshes were generally beyond public attention, the name CUGGL — pronounced “kyuguru” — was quietly registered as a trademark in Japan.
You can probably see why Gucci the Florentine fashion house is so happy that the application was approved. It is possible that the Japanese government will consider this a policy victory.
The dispute — along with the broader debate over parody and plagiarism that it raises but doesn’t quite answer — centres on a somewhat mysterious figure who appears on numerous trade mark applications as Nobuaki Kurokawa. He appears to be the owner of an Osaka-based company that sells shirts with take-offs from famous brands. He is also known for his creative flair, including the transposition of the Puma brand into other animal names like pug, labra(dor), or pome(ranian). These motifs are available on his website for as low as $12 to $25.
The range of brands Kurokawa’s company has mockingly reinvisioned — from Adidas, Lacoste and Nike to Prada and Balenciaga — offer a clue to how regularly intellectual property lawyers find themselves locking horns with Kurokawa on behalf of some very heavyweight international clients. One lawyer, who has both won and lost tussles with this foe on behalf of one of the world’s biggest sports brands, describes himself as “pretty certain”, but not 100 per cent sure, that Kurokawa (whom the FT was unable to reach) is a real person.
But during the pandemic, Kurokawa’s ingenuity took a new direction. The names CUGGL, and GUANFI were registered as trademarks by the Japan Patent Office. However, Kurokawa redacted the bottom half with stripes of bright pink to remove the words from shirts that featured the names.
In the case of CUGGL, Gucci attempted to block Kurokawa’s registration of the mark, arguing the similarity with its own brand and the likelihood of confusion for consumers. The registration, said Gucci’s lawyers, was sought with malicious intention to free-ride on goodwill and reputation. In a last month decision, the JPO found no sufficient visual, phonetic, conceptual or conceptual resemblance between CUGGL & Gucci for consumers to believe they were purchasing a Gucci product.
Kurokawa may yet face trouble. Although IP lawyers claim they can’t recall a time when Japanese companies (such Suntory, Nissan, and Honda, whose brands are often parodied), have taken cases to court, foreign giants tend to be more permissive. It is easy for Gucci to imagine Kurokawa filing a trademark infringement lawsuit against Kurokawa regarding the pink stripe shirts, even though it has lost round one.
Masaki Mikami, an IP lawyer, said Gucci’s frustration with what it sees as the unpredictability of the JPO may feel superficially reasonable. Kurokawa had his application blocked by JPO a few months back when Lacoste intervened to stop him from registering the mark “OCOSITE”, which featured an inverted Crocodile.
The JPO admits lawyers who are furious at its decisions, but it is not inconsistent or illogical. It simply takes a firmer position than its counterparts on the likelihood that consumers will be confused and tends not to believe that people are more intelligent than the parody-allergic big companies would like.
All this is important because the JPO is now almost a decade into its larger mission to become the global standard for patent offices. Japan set that task in 2014, when it realized that its country was an inept and sleepy steward for its own IP. It stated that IP management in small and venture capital companies was a particularly serious problem.
Japan’s industrial competitiveness required a first-class patent office, the government argued. This seems like a huge prescience in an age where IP rights protection and trade friction are at the heart of increasing economic security concerns and rising trade friction. Success, it said, would depend on establishing the world’s fastest, highest quality patent examinations.
Eight years later, it claims that it has reached this goal. Among the world’s five biggest patent offices (including the US, Korea, China and Europe), it runs the fastest examinations. It has been able to do this partly because it accepts that sometimes the public is not confused with parody.
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