Gucci loses trademark lawsuit to Japanese t-shirt firm

Italian fashion brand Gucci has lost a trademark lawsuit to Japanese t-shirt firm Parodys, which is said to be selling products parodying international brand logos. According to the South China Morning Post, Parodys trademarked the name "CUGGL" on October 2020 to use for its apparel, belts and footwear. Although the letters CUGGL bore a similar font to Gucci's, Parodys included a thick, pink-coloured stripe at the bottom, covering half of each letter.

Marks IP, the Japanese law firm representing Parodys said in a statement on its website that the Japan Patent Office (JPO) dismissed Gucci's opposition for the mark to be cancelled because of similarity and likelihood of confusion with the luxury brand. Gucci first filed the opposition with the JPO last July and claimed that the opposed mark was "sought with malicious intention to free-ride goodwill and reputation". This was done in a manner of hiding the lower part of the term “CUGGL” by a pink painted line to the extent that consumers could recognise it as “GUCCI”.

In fact, Marks IP said Parodys promotes t-shirts bearing the opposed mark with the most part of the term hidden. 

Although the JPO Opposition Board admitted a remarkable degree of popularity and reputation of the opponent’s “GUCCI” mark, it did not find a resemblance between “GUCCI” and “CUGGL” from visual, phonetic, and conceptual points of view. Due to a low degree of similarity of the mark, the Board said it had no reason to believe that relevant consumers would misconceive a source of goods in question bearing the opposed mark from Gucci or any entity systematically or economically connected to the opponent.

Assuming a low degree of similarity of the mark and less likelihood of confusion, the Board said it couldn't find a reasonable ground to admit that Parodys had a malicious intention to free-ride the goodwill and reputation of Gucci and do harm to the luxury brand. Therefore, the JPO dismissed the entire allegations and decided the opposed mark was valid.

Meanwhile, another luxury fashion brand Hermès filed a trademark lawsuit against US digital creator Mason Rothschild and his digital art project, MetaBirkins, in January this year for creating virtual versions inspired by its Birkin bags. The Guardian previously reported that Hermès accused Rothschild of "trying to profit from its trademarks", adding that the MetaBirkins brand "simply rips off Hermès' famous Birkin trademark by adding the generic prefix 'meta' to the famous trademark Birkin".

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