PARODY: What is funny to one, may not be funny to all!

By Linh Nguyen

“Parody” according to Cambridge dictionary is “writing, music, art, speech, etc. that intentionally copies the style of someone famous or copies a particular situation, making the features or qualities of the original more noticeable in a way that is humorous”. Many of us enjoy a parody because it brings humor, fun and laughter in a creative way while still reminding us of the original work. Parodies can commonly be protected under Copyright Law in the form of a derivative work in any jurisdiction having an IP protection system, either belonging to the owner of the original work or another party with the former’s permission. The most popular forms of parody we are probably familiar with are movie and music parodies, all of which are regulated under the umbrella of Copyright Law.

However, due to the various forms of expression, parodies also can be regulated by Trademark Law. Let’s take a look at an interesting case on trademark parody in Japan which triggered the battle between established Italian luxury fashion brand GUCCI and a new Japanese local brand CUGGL. In this case, the fashion giant filed an opposition against the registration of the trademark CUGGL before the Japanese Patent Office (JPO).

Trademark opposition in Japan is a legal proceeding allowing an opponent to oppose a newly registered trademark within the period of two months after registration by presenting grounds of objection.

Background

Upon the registration of the opposed trademark (Registration No. 6384970) on 6 May 2021 for clothing and fashion products under Class 25, GUCCI filed an opposition on 26 July 2021 wherein they presented a series of grounds including the renown and prominence of GUCCI all over the world, the similarity between CUGGL (when partially obscured by paint) and GUCCI for identical products, and the freeriding and improper profits gained by CUGGL based on the trust, fame and customer attraction attributed to GUCCI.

Despite recognition of the popularity and reputation of GUCCI, JPO did not find a confusing resemblance between the two trademarks phonetically, visually, conceptually and in terms of structure. Thus, the final decision of JPO to dismiss the opposition and maintain the registration validity of CUGGL on 28 July 2022 poured cold water on GUCCI and their relentless efforts during the opposition process.

What followed was a whirlwind of attention from the press and articles weighing in on the case, with titles such as “Is that shirt a Gucci… or a Cuggl?”, “This Japanese clothing brand trolled Gucci and won”, “Troll Japanese clothing company CUGGL goes viral…” – if CUGGL didn’t have publicity before, it certainly had it now.

But what may seem clear cut in this case is fuzzy in reality as the version of the CUGGL trademark used was different, with the paint portion pulled up like a mask to cover more than half of the word CUGGL, making it possible to see how people might relate the mark to GUCCI. While some may find it to be harmless fun, GUCCI was not laughing.

There would likely be no room for controversy if the pink paint portion was positioned as per its registration, but based on the owner’s modus operandi, the intention was clearly to create a parody of the brand as he has historically targeted famous brands in the course of his business. These include CHANEL, with the trademark used in a similar fashion , Balenciaga (Bai fanglaca), Adidas (Azides), and so on.

Upon searching the JPO database, Nobuaki Kurokawa is found to have numerous recently filed trademark parodies:

What would be the outcome of this case, in the context of Vietnam IP Law?

There is neither a definition nor specific legal regulations for parody under Vietnam IP Law. However, the basis on which general trademark applications are examined can be applied to parody marks. As such, a parody mark will be rejected if it is identical with or confusingly similar to another well-known trademark for identical or similar goods/services, or for dissimilar goods/services where the use of the mark may dilute or affect the distinctiveness of a well-known mark or where the trademark application was aimed at taking advantage of the reputation of a well-known mark. Had this case taken place in Vietnam, the result of the CUGGL opposition before the Intellectual Property Office of Vietnam would likely be similar to the outcome at JPO based on equivalent trademark examination principles and assessment criteria under the prevailing IP Law.

Parody marks: Yay or nay?

From the perspective of a trademark owner, a parody of their brand could be considered a form of trademark infringement or unfair competition because it may violate the exclusive rights granted to them to prevent the use of marks that are likely to cause confusion as to the origin of the goods or services, or give a false impression of a relationship between a parody mark and the owners of the well-known mark. Thus, while creating parodies may be a clever way to drum up business, using a trademark parody can be a double-edged sword – so have fun, but not too much fun.

Need advice on your trademarks? Contact us via kass@kass.asia for expert consultation on the registration and enforcement of your IP rights.

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KASS

Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.