Parody takes a serious turn for major brands

At some point in the depths of the pandemic, when the legal nuances of parody, patent endorsement, and provocative pink splashes were generally beyond public notice, the name CUGGL – pronounced “kyuguru” – has been quietly registered as a trademark in Japan.

Cover the bottom half of the name and you’ll probably see why Gucci, the Florentine fashion house and voracious global litigant, might be mad that the app succeeded. What is less obvious, however, is that the Japanese government might consider this a political success.

The dispute – as well as the larger parody and plagiarism debate it raises but doesn’t quite address – centers on a somewhat mysterious character who appears on numerous trademark applications as Nobuaki. Kurokawa. He is reportedly the owner of an Osaka-based company selling take-off shirts from famous brands. Among his richest veins of creativity, he tweaked the Puma brand into other animal names such as pug, labra (dor) and pome (ranian). Shirts with these designs sell on his website for between $12 and $25.

The range of brands that Kurokawa’s company has mockingly reinvented – from Adidas, Lacoste and Nike to Prada and Balenciaga – offers a clue as to how often intellectual property lawyers find themselves clashing with Kurokawa on behalf of very heavy international customers. A lawyer, who has won and lost fights with this enemy on behalf of one of the biggest sports brands in the world, describes himself as “pretty certain”, but not 100% sure, that Kurokawa (which the FT n couldn’t reach) is a real person.

But during the pandemic, Kurokawa’s ingenuity took on a new direction. It registered the seemingly innocuous names CUGGL and GUANFI as trademarks with the Japanese Patent Office, but redacted the lower half of the words with bright pink stripes when the names were reproduced on shirts.

In the case of CUGGL, Gucci tried to block the registration of the mark by Kurokawa, arguing the similarity with its own mark and the risk of confusion for consumers. The recording, Gucci’s lawyers said, was requested with malicious intent to take advantage of goodwill and reputation. But in a decision issued last month, the JPO found insufficient visual, phonetic or conceptual resemblance between CUGGL and Gucci to say that consumers would imagine themselves buying a Gucci product.

Kurokawa may still encounter problems. While intellectual property lawyers say they can’t remember a time when Japanese companies (like Suntory, Nissan and Honda, whose brands are often parodied) bothered to take cases to court, foreign giants are generally less permissive. It’s easy to imagine Gucci filing a trademark infringement lawsuit against Kurokawa for the pink striped shirts, despite losing the first round.

Masaki Mikami, an intellectual property lawyer, said Gucci’s frustration with what he sees as the JPO’s unpredictability may seem superficially reasonable. Kurokawa, after all, had an application blocked by the JPO only a few months ago when Lacoste intervened to prevent him from registering the OCOSITE trademark, which featured an inverted crocodile.

But the JPO, confess lawyers whose clients rant about its judgments, is neither inconsistent nor illogical. It simply takes a harder line than its counterparts on the likelihood of consumer confusion and tends to decide people are smarter than big brands allergic to parody would like.

Crucially, all of this puts the JPO nearly a decade into its much larger mission to become the global gold standard for patent offices. That was the task Japan gave him in 2014 when the then government realized that the country, in both the public and private sectors, was a dismal and sleepy steward of its own intellectual property. When it comes to managing intellectual property in junior companies and venture capital firms, where it should be most important, he said, the problem was particularly serious.

Japan’s industrial competitiveness required a top-notch patent office, the government argued. This now sounds like a huge prescience at a time when intellectual property rights and protection are at the heart of growing trade frictions and economic security concerns. Success, he said, would depend on having the fastest and highest quality patent examinations in the world.

Eight years later, the JPO claims to have achieved this goal. Among the five largest patent offices in the world (including the United States, Korea, China and Europe), it organizes the fastest examinations. He did this, in part, by accepting that sometimes audiences aren’t confused by parody.

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