The Opposition Division of the European Union Intellectual Property Office (EUIPO) has ruled that Nintendo’s Pokémon trademark PIKACHU has gained a reputation for certain goods in Classes 9 and 28 and that consumers could confuse it with the EU trademark (EUTM) application PKAQIU covering goods in Class 25. According to the EUIPO, the PKAQIU application was likely to take unfair advantage of Nintendo’s existing trademarks and, as a consequence, it rejected the application in its entirety (file number: B 3 147 629).

An individual had filed an EU word mark application for PKAQIU for certain goods in Class 25. Nintendo opposed the trademark on the basis of its EU word and word device mark PIKACHU and claimed reputation according to Article 8(5) EUTMR in relation to both signs. Both prior trademarks comprised goods in several classes, including Classes 9, 25, and 28.

The opponent submitted a number of documents to prove reputation—for example, witness statements, sales numbers, press articles, market recognition surveys, and awards. The documents referred to various goods in Classes 9 and 28 and in different EU countries. The EUIPO acknowledged that the PIKACHU trademarks enjoy a high degree of recognition in the relevant market based on the submitted proof.

Following this interim assessment, the EUIPO discussed the similarity of the trademarks and determined a low to average similarity based on the aural and visual appearance. Based on this, the EUIPO evaluated a possible link between the signs. It applied considerations of the Intel Corporation judgment of the Court of Justice of the European Union (C-252/07). The examiners discussed, in particular, the fact that the reputation of the opponent’s marks had been demonstrated for goods in Classes 9 and 28, but that the applied mark PKAQIU refers to goods in Class 25.

According to the EUIPO, Pokémon is a worldwide phenomenon and certain merchandising is common for such characters. Clothing is among these products and a link between the signs is therefore likely. The EUIPO continued with the assessment and discussed the detriment of unfair advantage. It also confirmed such “free riding” to the disadvantage of Nintendo, based on the opponent’s activities in the past in the field of clothing and the overlap of the relevant public. As a result, the EUIPO regarded the opposition as well-founded under Article 8(5) EUTMR and rejected the PKAQIU trademark application.

Source:https://www.inta.org/perspectives/law-practice/european-union-euipo-rejects-application-for-pkaqiu/