Sum m ary of cases
In response to an issue in which the Italian lux ury brand GU CC I file d an obje ction to the trad emark " C UG GL " file d in Japan , the Japan Pat ent Office ru led that the similar ity between the two trad emar ks was " low " and dis miss ed GU CC I ' s claim .
This decision is likely to be an important preced ent in consider ing the balance between international brand protection strategi es and regional trad emark rights .
Details of Tri al
The jud ges of the Japan Pat ent Office determined that the similar ity was low in consider ation of the following :
- Visual similar ity : GU CC I and C UG GL have different character structures , especially the re verse arrangement of " G " and " C "
- Aud it ory Simi lar ity : Pr on unci ation diff ers great ly between " G ucci " and " C ag ul "
- Con cep tual similar ity : GU CC I is a clear brand name , where as C UG GL has no specific meaning .
Further more , the two trad emar ks were not fully mat ched in the areas of goods and services used .
GU CC I ' s Cla im
The GU CC I side object ed for the following reasons :
- Global recogn ition and identi fication of our brand
- Ris ks of consumer conf usion due to similar trad emar ks
- Conc ern about dilu tion of brand value
In particular , GU CC I has a history of strong ly prote cting the trad emark rights of " GG " mon ogram s , and has respond ed sens iti vely to the registration of similar trad emar ks .
The industry ' s reaction
In response to this r uling , intelle ctual property experts have the following opinions :
" It can be said that the jud gement of the J PO emph asi zed the compre hen sive evalu ation of visual , audit ory and concep tual aspects in jud ging the similar ity of character trad emar ks . Es peci ally when it comes to the difference in pronunci ation . "
On the other hand , from the stand point of def ending international brand s , some vo ices have expressed concern about the difference between global brand protection and the standards of regional trad emark review .
Future Impact
This judgment may have the following impact :
- Review of trad emark fil ing strategy in Japan (espe ci ally foreign brand s)
- C lari fication of similar trad emark jud ging criteria
- En han ced debate on the balance between brand protection and trad emark registration
It will also be obser ved whether GU CC I will file further appe als against this r uling . At this time , there is no additional comment from GU CC I .
Basic Princip les of Tr adem ark Registr ation
Under the trad emark law of Japan , trad emark registration is ref used in the following cases :
- identi cal or similar to the registered trad emark of another person ;
- The goods and services are identi cal or similar .
- In the case of well - known trad emar ks , protection is provided regard less of the similar ity of goods and services .
In this case , it would be determined that the requirements of paragraph s 1 and 2 are not met . Reg ard ing the protection as a well - known trad emark (3), while acknow led ging the reput ation of GU CC I , C UG GL was not found to have mis used GU CC I ' s reput ation .