Parody takes a serious turn for big-name brands
Sometimes during the depths of the pandemic, when the legal nuances of parody, patent approval, and provocative pink slosh were generally beyond the public’s attention, the CUGGL name – pronounced “qguru“- was quietly registered as a trademark in Japan.
Cover the bottom half of the name, and you can probably see why Gucci, the Florentine fashion house and voracious global plaintiffs, may be mad that the application has succeeded. What is less clear, however, is whether the Japanese government can record this as a policy success.
The controversy – along with the widespread debate over parody and plagiarism it raises but does not quite respond to – is centered on a somewhat mysterious figure who appears on several trade mark applications as Nobuki Kurokawa. Apparently, he owns an Osaka-based business that sells take-off shirts from well-known brands. Among the rich areas of his creativity is the transformation of the puma symbol into other animal names such as pug, labra (dor) and pom (renyon). Shirts with these motifs sell for between $12 and $25 on his website.
Kurokawa’s company has mocked up a range of brands from Adidas, Lacoste and Nike to Prada and Balenciaga – providing a clue as to how the intellectual property lawyer on a regular basis finds himself with Kurokawa in some very heavy international clients. Sounding the horn from the side. One lawyer, who has faced both victory and defeat with this foe on behalf of one of the world’s biggest sports brands, describes himself as “very certain”, but not 100 percent 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. They registered the apparently harmless names CUGGL and GUANFI as trademarks with the Japan Patent Office, but when the names were reproduced on the shirt the bottom half of the words were redacted with bright pink stripes. to be done.
In the case of CUGGL, Gucci attempted to block registration of Kurokawa’s mark, arguing its resemblance to its own brand and the potential for confusion for consumers. Gucci’s lawyers said the registration was sought with the malicious intent to ride free on goodwill and reputation. But in a decision last month, JPO did not find enough visual, phonetic or conceptual similarities between CUGGL and Gucci to say that consumers would imagine they were buying a Gucci product.
Kurokawa may have trouble right now. While IP lawyers say they can’t remember a time when Japanese companies (such as Suntory, Nissan and Honda whose brands are often parodied) bothered to take cases to court, foreign giants are usually less are permissible. It’s easy to imagine that Gucci has filed a trademark infringement claim against Kurokawa over the pink striped shirt, despite losing it the first time.
Masaki Mikami, an IP lawyer, said Gucci’s disappointment as the unpredictability of JPO may seem superficially justified. Kurokawa, after all, had an application blocked by JPO just a few months ago, when Lacoste stepped in to block him from registering the mark of OCOSITE, which featured an upside-down alligator.
But JPO accepts lawyers whose clients are angry with its decisions are not inconsistent or illogical. It takes a stronger line than counterparts on the potential for consumer confusion and stipulations that people with parody-allergies are smarter than the big brands.
Importantly, all of this finds JPO nearly a decade into its broad mission to become the global gold standard of patent offices. That’s what Japan set out to do in 2014 when the government of the time realized that the country, both in the public and private sectors, was in a daze and drowsy of its own IP. When it comes to IP management in small and venture capital companies, where it matters most, she said, the problem was particularly acute.
Japan’s industrial competitiveness requires a first-class Patent Office, the government argued. This now looks like a giant conscience in an era where IP rights and security lie at the center of rising trade frictions and economic security concerns. It added that success would depend on establishing the world’s fastest, highest quality patent examinations.
Eight years later, JPO claims it has achieved this goal. Of the five largest patent offices in the world (including the US, Korea, China and Europe), it runs the fastest tests. This has partly led to the acceptance that, at times, the public is not confused with parody.
