4 ms·

Nintendo loses trademark fight against Super Mario supermarket

37 points by healsdata 2y ago

nadermx 2y ago
Seems Nintendo didn't have a trademark for supermarket use
- ycombinatrix 2y ago
  Not yet...
doctaj 2y ago
This has to be “AI in the workplace” going awry. There’s no way an actual human thought they were adding value to a business or protecting business interests by going after this person. It’d be insane.
- realslimjd 2y ago
  Nintendo is _very_ protective of its brand. They acted like this long before AI.
- thatguy0900 2y ago
  Nintendo is very notorious for stuff like this
- cma 2y ago
  Trademarks in some jurisdictions have to be actively enforced to be maintained.
- washadjeffmad 2y ago
  https://en.m.wikipedia.org/wiki/Super_Hornio_Brothers https://en.m.wikipedia.org/wiki/Super_Hornio_Brothers
DrillShopper 2y ago
Typical Nintendo - sue anything you don't like and cry if you don't get what you want
mrandish 2y ago
Nice to see common sense prevail against such a notorious legal bully. Nintendo has recently launched a major campaign of unprecedented legal attacks on the historical preservation, retro emulation and fan creation communities. While Nintendo has always been protective of its IP rights, this was largely limited to stopping piracy of current titles and protecting their trademarks from commercial infringement, both of which are appropriate and understandable. However, the greatly expanded and all-encompassing scope of their recent legal actions now threatens aspects of non-profit historical preservation and adjacent fan activities unrelated to Nintendo's present day commercial interests. Previously, Nintendo's lawyers made at least some effort to distinguish between non-profit or fan hobby activities and piracy or commercial trademark abuse.
- vikingerik 2y ago
  Counterpoint, though - this supermarket pretty obviously is using that name because it's known from Nintendo. Something like "Mario Market" would be a coincidence of naming (like nissan.com for example, or MikeRoweSoft vs Microsoft), but it's pretty impossible to deliberately call it Super Mario in 2013 and not know you're intentionally free-riding. How much of that should we allow? Taken to absurdity, or maybe not: should someone name their child "Nintendo" so they can put that name on anything they operate?
  - mrandish 2y ago
    Trademarks are issued only for specific pre-defined categories. For example, computers fall within Category 9 (which I happen to remember from filing trademarks a long time ago). IANAL, but I do know a fair bit about trademarks from going through several applications and asking a bunch of questions. Nintendo's Super Mario mark wasn't granted for the category containing supermarkets, so their registration doesn't allow them to stop anyone using those two words for a super market. But if a market were to also incorporate elements of the Super Mario logo, font or trade dress then Nintendo could pursue them for trading on the value of Nintendo's brand. Which is what you're referring to. But in this case, the market didn't do that. Trademark law and the associated decades of precedent are actually pretty deep and nuanced. Even back in the 1920s people would try to skirt the rules and benefit from a strong brand's recognition without getting technically busted. So trademark jurisprudence has gotten surprisingly good at sniffing out these shenanigans. But by not using any other logos, colors or trade dress, the market is completely in the clear within their category. It actually doesn't matter if Mario, the market owner, was being a savvy legal eagle and shrewdly planned to soak up a little of Nintendo's brand value or if Mario really did just name his super market "Super Mario". Trademark law expressly allows him to do that. And it's a good thing it does because granting mega-brands like Nintendo and Disney a monopoly on using simple combinations of common words is a slippery slope toward dystopia. It needs strict boundaries and limits. Mario's market isn't "getting away" with anything here. He's playing by the rules. IMHO, this wasn't even a close call. Nintendo's claim was obvious bullshit. They knew it was bullshit but filed it anyway because usually little guys just give up when faced with an army of high-priced lawyers. I'm glad Mario didn't. Instead, he asserted his rights under the law and won because he didn't do anything wrong.
ycombinatrix 2y ago
related post, nintendo lawyer bragging about threatening innocent children: https://news.ycombinator.com/item?id=40985815 https://news.ycombinator.com/item?id=40985815
pinko 2y ago
Knowing quite a bit about the world of Costa Rican grocery stores -- many of which started using "Hiper-" (spanish for hyper-) as a prefix in their names a few decades ago, to one-up markets merely named "Super-" [1] -- I'm actually quite suprised they didn't just rename themselves "Hiper Mario" and save the legal fees. But bravo to them for winning against all odds. [1] https://ticotimes.net/2004/04/02/hipermas-supermarket-aims-for-2005-opening https://ticotimes.net/2004/04/02/hipermas-supermarket-aims-f...

37 points by healsdata 2y ago

nadermx 2y ago

Seems Nintendo didn't have a trademark for supermarket use

ycombinatrix 2y ago
Not yet...

doctaj 2y ago

This has to be “AI in the workplace” going awry. There’s no way an actual human thought they were adding value to a business or protecting business interests by going after this person. It’d be insane.

realslimjd 2y ago
Nintendo is _very_ protective of its brand. They acted like this long before AI.
thatguy0900 2y ago
Nintendo is very notorious for stuff like this
cma 2y ago
Trademarks in some jurisdictions have to be actively enforced to be maintained.
washadjeffmad 2y ago
https://en.m.wikipedia.org/wiki/Super_Hornio_Brothers https://en.m.wikipedia.org/wiki/Super_Hornio_Brothers

DrillShopper 2y ago

Typical Nintendo - sue anything you don't like and cry if you don't get what you want

mrandish 2y ago

Nice to see common sense prevail against such a notorious legal bully. Nintendo has recently launched a major campaign of unprecedented legal attacks on the historical preservation, retro emulation and fan creation communities. While Nintendo has always been protective of its IP rights, this was largely limited to stopping piracy of current titles and protecting their trademarks from commercial infringement, both of which are appropriate and understandable. However, the greatly expanded and all-encompassing scope of their recent legal actions now threatens aspects of non-profit historical preservation and adjacent fan activities unrelated to Nintendo's present day commercial interests. Previously, Nintendo's lawyers made at least some effort to distinguish between non-profit or fan hobby activities and piracy or commercial trademark abuse.

vikingerik 2y ago
Counterpoint, though - this supermarket pretty obviously is using that name because it's known from Nintendo. Something like "Mario Market" would be a coincidence of naming (like nissan.com for example, or MikeRoweSoft vs Microsoft), but it's pretty impossible to deliberately call it Super Mario in 2013 and not know you're intentionally free-riding. How much of that should we allow? Taken to absurdity, or maybe not: should someone name their child "Nintendo" so they can put that name on anything they operate?
- mrandish 2y ago
  Trademarks are issued only for specific pre-defined categories. For example, computers fall within Category 9 (which I happen to remember from filing trademarks a long time ago). IANAL, but I do know a fair bit about trademarks from going through several applications and asking a bunch of questions. Nintendo's Super Mario mark wasn't granted for the category containing supermarkets, so their registration doesn't allow them to stop anyone using those two words for a super market. But if a market were to also incorporate elements of the Super Mario logo, font or trade dress then Nintendo could pursue them for trading on the value of Nintendo's brand. Which is what you're referring to. But in this case, the market didn't do that. Trademark law and the associated decades of precedent are actually pretty deep and nuanced. Even back in the 1920s people would try to skirt the rules and benefit from a strong brand's recognition without getting technically busted. So trademark jurisprudence has gotten surprisingly good at sniffing out these shenanigans. But by not using any other logos, colors or trade dress, the market is completely in the clear within their category. It actually doesn't matter if Mario, the market owner, was being a savvy legal eagle and shrewdly planned to soak up a little of Nintendo's brand value or if Mario really did just name his super market "Super Mario". Trademark law expressly allows him to do that. And it's a good thing it does because granting mega-brands like Nintendo and Disney a monopoly on using simple combinations of common words is a slippery slope toward dystopia. It needs strict boundaries and limits. Mario's market isn't "getting away" with anything here. He's playing by the rules. IMHO, this wasn't even a close call. Nintendo's claim was obvious bullshit. They knew it was bullshit but filed it anyway because usually little guys just give up when faced with an army of high-priced lawyers. I'm glad Mario didn't. Instead, he asserted his rights under the law and won because he didn't do anything wrong.

ycombinatrix 2y ago

related post, nintendo lawyer bragging about threatening innocent children: https://news.ycombinator.com/item?id=40985815 https://news.ycombinator.com/item?id=40985815

pinko 2y ago

Knowing quite a bit about the world of Costa Rican grocery stores -- many of which started using "Hiper-" (spanish for hyper-) as a prefix in their names a few decades ago, to one-up markets merely named "Super-" [1] -- I'm actually quite suprised they didn't just rename themselves "Hiper Mario" and save the legal fees. But bravo to them for winning against all odds. [1] https://ticotimes.net/2004/04/02/hipermas-supermarket-aims-for-2005-opening https://ticotimes.net/2004/04/02/hipermas-supermarket-aims-f...