Nintendo and The Pokémon Company sue over Palworld – LEMOON v LENNON Trade Mark dispute

Nintendo and The Pokémon Company sue over Palworld

A new development has occurred in the dispute involving Nintendo and the developers of the Palworld game, which we already covered in a previous blog post a few months ago.

Nintendo accused Pocket Pair of using character designs and elements from the popular Pokémon universe. The controversy intensified with the release of a mod that included Pokémon characters in Palworld. A mod is a modification made by the gaming community that changes or adds content to the original game. In this case, the mod included main characters such as Ash, Brock and Misty, as well as some Pokémon creatures such as Pikachu and Torchic, and allowed players to hunt and fight with weapons. This led Nintendo to file a DMCA, a US legal mechanism used by copyright holders to request the removal of infringing content from websites and social media, including videos of these Pokémon mods within the game Palworld.

On 19 September, Nintendo and The Pokémon Company announced their decision to sue Pocket Pair in the Tokyo District Court. This time, instead of claiming copyright infringement, Nintendo claims infringement of several of its patents. Pocket Pair expressed surprise, stating that they had no knowledge of the patents they were accused of infringing. So far, the companies have not provided any additional information about the claims. 

While Nintendo has not publicly identified the patents it claims have been infringed, there is suspicion that one of those would be Japanese patents No. 7545191, which details the mechanics of catching Pokémon, specifically how a player throws an object to catch a creature. This has been described as a "killer patent" and warned that it could be difficult to avoid infringing in games with similar mechanics. In addition, other patents (Nos. 7528390, 7493117 and 7505854) also cover aspects of catching and riding Pokémon, which further complicate the situation for Pocket Pair.

EU trade mark dispute: LEMOON v LENNON

On 18 September, the General Court of the European Union ruled in case T-1099/23 on a dispute between the EU trade mark application for the word LEMOON and the earlier Spanish word mark LENNON.

Mr Markus Scherer applied to the European Union Intellectual Property Office (EUIPO) to register the sign LEMOON as an EU word trade mark for "beer and beer products, non-alcoholic beverages such as juices, waters and flavoured soft drinks, alcoholic beverages except beer, premixed alcoholic beverages, spirits and liqueurs, and wine" in Classes 32 and 33 of the Nice Classification. However, Mr Miguel Ángel Rodríguez opposed the registration on the basis of his earlier Spanish word mark LENNON (M3026945), covering goods in Class 33 with the description 'alcoholic beverages except beer'.

While the EUIPO Opposition Division partially upheld the opposition on the basis of the similarity between the two marks, this decision was overturned by the EUIPO Board of Appeal who therefore allowed the registration of the LEMOON word mark for all goods and services, including alcoholic beverages. Mr Miguel Ángel Rodríguez appealed against the decision to the General Court of the European Union, which had to decide whether there was a likelihood of confusion between the marks at issue.

As regards the conceptual similarity of the marks, the Court upheld the EUIPO Board of Appeal's assessment that the mark applied for, 'LEMOON', would evoke, for those familiar with the language, English words such as 'lemon' or 'moon', whereas the earlier mark, 'LENNON', would be immediately associated with John Lennon, the famous artist and member of the Beatles. The Court stated that this association was clear and direct and thus the conceptual difference was sufficient to conclude that there was no likelihood of confusion in the mind of the relevant public, which in this case was the general Spanish public with an average level of attention.

The applicant had argued that the Board of Appeal had not sufficiently established the fame of the Lennon surname and the impact this would have on a comparison between the two signs. However, the General Court noted that the applicant had admitted that the Beatles had an exceptional reputation. Since John Lennon was a founding member and central figure of the group, the Court considered that his fame was implicitly recognised. This meant that the public, when seeing the mark 'LENNON', could easily associate it with the artist, reinforcing the conclusion that there was no likelihood of confusion.

As a result, the Court concluded that there was no likelihood of confusion between the marks LEMOON and LENNON. Although phonetic similarities were acknowledged, the Court held that the conceptual differences were significant enough to neutralise any potential confusion in the mind of the relevant public. Therefore, the applicant's appeal was dismissed and the registration of the EU trade mark LEMOON (N. 018183606) was allowed.