They Might Look Fly, But This Probably Wouldn’t Fly In An Infringement Lawsuit

The Japan Patent Office (JPO) recently registered a trademark for the brand name CUGGL in logo form in International Class 25 for apparel. Here is an image of the logo in Registration No. 6384970.

As you can see, the logo is pretty inoffensive. The words CUGGL appear in all capital letters, with a pink paint streak covering maybe 1/6th of the bottom of the letters.

But all is not what it seems. Applicant, Nobuaki Kurokawa, owns a company that sell shirts bearing a similar logo, with one minor difference - the pink paint streak is higher up. So high up in fact, that what you see looks a lot like it says “GUCCI.” Check it out:

Enter Gucci.

Not surprisingly, the fashion giant filed an Opposition to registration of the CUGGL logo. They argued that the CUGGL logo should be blocked from registration, because it was too similar to the Gucci trademark, and that Kurokawa was doing it on purpose.

The ins and outs of analyzing whether two trademarks are too similar is different in every jurisdiction, but the general theme is usually the same. If the trademarks, as applied to the goods or services, are such that a consumer would likely think the goods or services come from the same source, then they are too similar.

The fact that the JPO allowed this trademark might, at first blush, seem bizarre, but the JPO’s hands were tied. Examiners and Opposition boards are tasked with comparing a trademark as it appears in an application, not as it appears elsewhere. Sure, circumstantial evidence is also considered, but in this case, the JPO found that it simply did not outweigh the dissimilarity of the trademarks.

That being said, an infringement lawsuit would probably go a little different. While the logo in the Application does not look like it says Gucci, the logo on the shirt certainly does. The court would be able to compare the logo on the shirt with the Gucci trademark, rather than be restricted to comparing it only to the logo in the Application.

If Gucci took the next step and filed, it would not be Applicant’s first fight. Kurokawa’s company makes a habit of selling apparel with designs that look suspiciously like other fashion brands. That would support the argument that the infringement was intentional, something the court can look at too.