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 released The Switch, a home video game system that can also be used as a handheld, in March 2017. The Switchhas 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.
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.
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 to provide game accessories by unrelated entities to the game maker with an explicit indication of its usage, “FOR” or “(専)用” on package.
- ALLONE indicates “FOR SWITCH” with a smaller font size on upper right of the package.
- 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, suitable pouch bag for the Nintendo Switch. If so, it is unlikely that the “SWITCH” mark in dispute on the package would not play a role of source indicator, but rather a mere description to indicate quality or usage of the goods.
Consequently, the Board decided the “SWITCH” mark in dispute would not be within the scope of Nintendo’s trademark right since Article 26 (1)(ii) of the Trademark Law provides trademark right shall not be effective against a mark indicating quality or usage of goods to the extent that the mark is used in an ordinary manner.
Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM