May 31, 2019
Unfair Competition News
The Tokyo District Court found that the configuration of the cosplay costumes is an "Indication of Goods" under Article 2(1)(i) of the Unfair Competition Prevention Act and granted relief by way of injunction, destruction, and damages. (Tokyo District Court [Civil Court No. 46]: 2017 (WA) 6293 - Judgement issued on December 25, 2017.)
The Plaintiff, Nintendo Co., Ltd. ("Nintendo"), filed a lawsuit against KK MariCAR ("Defendant") seeking an injunction against the use of the "MariCAR" marks and "Super Mario Cart" costumes with respect to the "rental of go-carts and cosplay costumes" and damages on the grounds that the costume configuration of Nintendo's famous characters qualified as an "Indication of goods" under Article 2(1)(i) of the Unfair Competition Prevention Act ("UCPA.") The Court accepted Nintendo's claims and granted partial relief to Nintendo (Case No. 2017 (WA) 6293, judgment issued on December 25, 2017.)
1. Background
The Plaintiff ("Nintendo") is one of the world's largest video game companies and started selling gaming software called "Super Mario Cart" in August 27, 1992. The Defendant is a rental go-cart provider and started its business in June 24, 2015. The Defendant had been leasing go-carts bearing the mark "MariCAR" and costumes for "Super Mario Cart" characters, as shown above ("Costumes"), at its respective offices from June 24, 2015, to June 23, 2016.
2. Judgement
2.1. Rullings
The Court ordered as follows:
- Injunction preventing the Defendant from using the mark "MARICAR in Katakana" and other "MARICAR"-related marks in business facilities and operation (other than websites and fliers written only in foreign languages.)
- Injunction preventing the Defendant from using the Costumes.
- Partial Destruction of promotional videos.
- Injunction preventing the Defendant from using domain names including the word "maricar" (other than those used in the websites written only in foreign language.)
- Damages of 10,000,000 JPY.
The Court ruled that "MARICAR in Katakana" is a well-known abbreviation for "MARIO CART" to Japanese consumers and ordered the Defendant to stop the use of "MARICAR in Katakana." It should be noted, however, that the Court denied an injunction against the use of "MARICAR in Katakana" in foreign-language websites, because "MARICAR in Katakana" is not well-known to foreign tourists.
Regarding the Costumes, the Court found that the respective configuration of costumes has acquired distinctiveness and become well-known through long and extensive use, the Costumes have acquired a secondary meaning, and the Costumes have become qualified as an "Indication of Goods" under Article 2(1)(i) of the UCPA. Thus, the Court ordered an injunction against the use of promotional photos and/or videos including the Costumes, putting the Costumes on staff members, placing a Mario Doll in the offices, and leasing the Costumes in the defendant's business.
Regarding the Confusion between Nintendo's gaming software and Defendant's rental go-cart services, the Court found that the Defendant's services caused confusion as to the origin of the goods and services. This is because it is common knowledge that many companies transform two-dimensional worlds, such as movies and/or games, into reality in theme parks and so on. Nintendo itself is reportedly planning a development of such theme parks. In addition, as the Defendant's rental services involve customers who are cosplaying as Mario Cart characters climbing aboard carts and driving on public roads, the Court ruled that the Defendant's services have a strong association with Nintendo's gaming software.
In fact, shortly after the news coverage of the Defendant's rental services broke, many people tweeted about the services in question in the mistaken belief that they were provided by Nintendo.
Consequently, the Court accepted Nintendo's claims and granted relief by way of an injunction and destruction, and awarded damages totaling around 10 million JPY [around 90,000 USD.]
Written by: Ms. Chiaki Kato (Trademark Attorney)