Aug 11, 2022 (thefashionlaw.com) - Gucci has been handed a loss in a trademark fight in Japan, with the national trademark office refusing to block the registration of a mark that counsel for Gucci alleges will cause confusion among consumers.
In a decision dated July 12, the Japan Patent Office (“JPO”) tossed out an opposition proceeding launched by Gucci over an application for registration for “CUGGL” for use on clothing and footwear, among other goods in Class 25. While the word mark on its own is not necessarily a dead-ringer for Gucci’s famous name, the Kering-owned brand argued that the unaffiliated filing party’s use of a pink line across a portion of the word “CUGGL” – which forms part of the mark – is being used to make the goods upon which the mark is used appear as though they originate from or are otherwise affiliated with Gucci.
On the heels of the filing of an application for the “CUGGL” mark back in October 2020, counsel for Gucci initiated an opposition proceeding with the JPO in July 2021, arguing that the mark should not be registered on the basis that it runs afoul of several provisions in the Trademark Act of Japan, namely, Articles 4(1)(vii), (xv), and (xix). Specifically, Gucci claimed that the lookalike mark is likely to “cause damage to public order or morality;” “cause confusion in connection with the goods or services pertaining to [another party’s] business;” and “is identical with, or similar to, a trademark which is well known among consumers in Japan or abroad as that indicating goods or services pertaining to a business of another person, [and is being] used for unfair purposes (referring to the purpose of gaining unfair profits, the purpose of causing damage to the other person, or any other unfair purposes).” ...continue reading
