Gucci vs Cuggle
On October 6, 2020, the owner of an Osaka-based clothing business, Nobuaki Kurokawa, applied to register a trademark “CUGGL” for clothing, footwear, headwear, and apparel in class 25. The trademark included a pink painted line covering the lower part of the term “CUGGL”, creating an image visually similar to the word GUCCI. For that reason, Italian luxury fashion house GUCCI filed an opposition with the Japan Patent Office (JPO) on July 26, 2021, claiming that the trademark bears a close resemblance to the GUCCI trademark and is likely to cause consumer confusion.
Unfortunately for GUCCI, on July 12, 2022, the Japan Patent Office (JPO) dismissed an opposition. The Board did not find a resemblance between “GUCCI” and “CUGGL” from visual, phonetic, and conceptual points of view. As the trademarks were deemed not similar enough, the court could not oppose the trademark as being filed in bad faith or with malicious intent to free-ride on GUCCI’s reputation.
This is not the first time the name Nobuaki Kurokawa has appeared on controversial trademark applications. From Adidas, Puma and Nike to Prada and Balenciaga, Kurokawa has released numerous lines of clothing that used the trademarks of well-known international brands in one way or another. And this retailer is far from the only example of counterfeiting in Japan. Concerted efforts are being made by different sectors in Japan to set up a framework to eliminate counterfeit products. Some of their approaches are more advanced than those implemented in Europe or the USA. However, problems still remain.
Counterfeiting in Japan
As online transactions and e-commerce have developed and counterfeit products are easily spread through such means, a wide variety of industries, ranging from the manufacturing industry, mainly operating business in physical markets, to the contents industry, have been suffering from various damages caused by counterfeit products.
Like in many other countries, the top producer and exporter of counterfeit goods distributed in Japan is China, accounting for 85.2% of all fake goods flowing into the country . Until recently, many Japanese consumers purchased fake items knowingly as the practice has entered a realm of normality within the market. However, the main efforts today are focused on how to prevent consumers from accessing fraudulent websites which are deceitfully selling counterfeit products to consumers who are deceived either into buying counterfeits despite their wish to purchase authentic products.
Japan's long-term vision for IP Laws
Obtaining trademark rights in Japan requires filing an application for trademark registration with the Japan Patent Office (JPO). In total, 135,313 trademarks were registered in 2020, and the average time necessary for completing registration was about 11 months (FY2020). Japan uses the first-to-file system and is a member of the Madrid Protocol, an international system for obtaining trademark protection for many countries with a single application.
Japan understands that small and medium-sized enterprises (SMEs) and venture companies are a source of Japan’s industrial competitiveness, and therefore there is a need to support their activities from the aspect of intellectual property. In 2013 set a vision to bring significant changes to the way IP laws are currently managed and enforced in Japan. With the aim of establishing the world’s most advanced intellectual property system, the following three goals have been set for Japan’s long-term IP strategy:
Building up an intellectual property system attracting users and innovation investment from overseas.
Making Japan’s intellectual property system become a standard in emerging nations in Asia.
Continuously producing human resources with creativity and strategic capability for global intellectual property activities.