On January 29, 2020, the Japan IP High Court ruled in favor of Nintendo over a case against go-kart operator Mari Mobility (the company formally named Maricar) and ordered damage compensation of 50 million JP.
Mari Mobility, the go-karting company formerly known as Maricar, has provided services for tourists riding around Tokyo streets in go-karts and offered Nintendo-themed costumes for customers to wear as various Mario characters, strongly resembling the likes of Mario Kart. The service has been a popular tourist attraction.
Nintendo quickly stepped in and sued Mari Mobility for their Street Kart service, initially winning in 2018.
Subsequently, Mari Mobility has re-branded its service as Street Kart, providing superhero-themed outfits and swapping out all Nintendo references with various superhero ones. Besides, “Unrelated to Nintendo,” was written on Mari Mobility’s karts.
The official site reads:
We at Street Kart is providing our service as usual. Street Kart is fully complied [sic] through local governing laws in Japan. Street Kart is in no way a reflection of Nintendo, the game ‘Mario Kart’. (We do not provide rental of costumes of Mario Series.)
Mari Mobility hoped to reduce the damages owed to Nintendo, a sum of 10 million yen (around $92,000) awarded by the lower court. The strategy has backfired, however, with Mari Mobility losing and IP High Court judge ordering them to pay five times the damages, now totaling 50 million yen ($458,000)
In a statement following the ruling, Nintendo stressed that it will continue defending violations of its intellectual property that damages the brands it has built up over numerous years.
The Japan Patent Office (JPO) rendered advisory opinion in a trademark fight over “Switch” name unfavorable to Japanese video game giant Nintendo. [Case no. 2018-600008, Gazette issue date: May 31, 2019]
Nintendo Switch
Nintendo released The Switch, a home video game system that can also be used as a handheld, in March 2017. The Switch has become the fastest-selling home game console ever in the United States. By the end of 2017, more than 14 million consoles were sold worldwide.
Nintendo owned trademark registration no.
3274643 for the SWITCH mark (see below) on home games in class 9 since 1997.
Japan TM Registration no. 3274643 for SWITCH by Nintendo
Switch Carrying Case (Hard Pouch Bag)
On November 22, 2017, Nintendo found ALLONE CO., Ltd., a Japanese merchant for game accessories, distributes hard pouch bag for home games (see below) via websites and electronics retail stores.
It is obvious that a word “SWITCH” is indicated
in prominent manner with a larger font size on package of the pouch bag, however,
pictures of the Nintendo Switch and the console in the bag are printed on the package.
In order to settle the trademark dispute, Nintendo
requested advisory opinion to the JPO on March 15, 2018.
Advisory Opinion (Hantei)
The Japan Trademark Law allows the Japan Patent
Office to provide advisory opinions with respect to the scope of trademark
right upon request under Article 28.
Proceedings of the advisory opinion system
is almost the same as invalidation trial. Upon a request of advisory opinion
from either party, the JPO appoints three examiners to constitute a trial board
and orders other party to answer the request for subsequent trial. Board seldomly
holds an oral hearing to investigate the case. In general, all proceedings are based
on written statements and documentary evidences.
From a legal point of view, the advisory opinion
by JPO does not have a binding effect, unlike the judicial decision. Accordingly,
less than 10 trademark cases have been lodged with the JPO to seek the advisory
opinion annually.
JPO Opinion
On April 11, 2019, the JPO released its advisory
opinion to the case by stating that:
As an undisputed fact, the Nintendo Switch has acquired a certain degree of reputation and popularity as a source indicator of Nintendo’s home video games among relevant consumers by the time ALLONE started to promote Switch pouch bag.
It has become common practices that game accessories made by unrelated entities to the game maker have been provided with an explicit indication of its usage or purpose, “FOR” or “(専)用” on package.
ALLONE indicates “FOR SWITCH” with a smaller font size on upper right of the package as well.
Based on the foregoing, the board considers that relevant consumers with an ordinary care would perceive “SWITCH” on the package as a mere indication to suggest its usage, namely, suitable pouch bag for the Nintendo Switch. If so, it is unlikely that the “SWITCH” mark in dispute on the package plays a role of source indicator, but rather a mere description to indicate quality , usage or purpose of the goods.
Consequently, the Board decided the “SWITCH” mark in dispute would not conflict with Nintendo’s trademark right since Article 26 (1)(ii) of the Trademark Law provides trademark right shall be unenforceable against a mark simply indicating quality or usage of goods to the extent that the mark is used in an ordinary manner.
