According to Nintendo’s news release, the Tokyo District Court made the decision in the infringement law suit H29 (WA) No.6293 on September 27, 2018. In this suit, Nintendo sues the company, which uses the abbreviations of the Nintendo’s famous mark “MARIO KART” and rents cars and costumes. Nintendo tries to stop the use and rent, asserting that the rent for these cars and costumes which are used by the characters in the video games of “MARIO KART” series and the use of the abbreviations should be famous. Although it seems that the request for injunctions was partially accepted, the decision with its grounds has not been disclosed to public by the court yet. The defendant’s press release says that they appealed to the IP High Court.
Before this request, on January 26, 2017, the JPO made the decision for the Opposition against the trademark registration for the abbreviation of “MARIO KART” between the same parties as follows.
Opposition No. 2016-900309
The registration was not cancelled as there is no likelihood of confusion
These marks were judged to be clearly dissimilar in terms of pronunciation, appearance and meaning. Although Nintendo asserted that “マリカー (mari car)” is well known as the indicator of the Nintendo’s goods and the abbreviation of the cited mark, this assertion was not accepted.
The Opposition Examiners indicated that there is not sufficient proof showing that the abbreviation itself is used and well known as the indicator. The famousness was not accepted based on that the abbreviation is simply indicated with the video game title “MARIO KART” in the explanations of documents such as video game magazines and catalogs, and Wikipedia or the abbreviation alone is indicated only in individuals’ blogs.
- My comments
When I was a child, everyone around me had abbreviated the video game “MARIO KART” as “マリカー (mari car)”. Therefore, as one of the players of MARIO KART video game, I feel that the abbreviation “マリカー” is well known among general consumers.
If the registration had been maintained based on a weak relation between “video games” and “car rental”, I think such a decision is more reasonable.
On the other hand, the Tokyo District Court judged the abbreviation to be famous in the law suit H29 (WA) No.6293 according to the Nintendo’s news release.
otaku otamaru trademark