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Comment by mrandish | Hacker News Reader

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.

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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?

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.

What are they free-riding on? Do you believe consumers might be confused into thinking that Nintendo runs a Costa Rican supermarket?

> it's pretty impossible to deliberately call it Super Mario in 2013 and not know you're intentionally free-riding.

The article says "But despite trading under the Super Mario name for decades" which seems to imply that 2013 was just when they registered the trademark, not when they originally named the supermarket

Also it may be the case that supermarkets are commonly named "Super (name)" there although I can't confirm that.

I would be curious when exactly the supermarket was named "Super Mario" though.

As a Spanish speaker, the name sounds very natural. We call supermarkets just “super” is daily speech.

Somebody named Diego might call their supermarket “Super Diego”. It’s not weird at all.

I’m sure this guy was aware that Super Mario was a Nintendo character. But is this enough to prohibit him from using his own name for his own store?

I think it's hard to argue MikeRoweSoft was a coincidence but Super Mario can't be.

MikeRoweSoft was operating in the same business area (SW).

If this Super Mario supermarket was clearly unrelated to video games and didn't use Nintendo's logos, characters, or branding style, then it's unlikely consumers would think it was officially connected to Nintendo-> Trademarks primarily protect against confusion.

If the supermarket didn't use Nintendo's font, colors, imagery, or characters —just the name—then the court likely ruled that:

-No confusion exists since a grocery store isn't competing with a video game company.

-No dilution occurs because Nintendo's brand strength in gaming isn't weakened by a supermarket.

-Fair use applies if the name has a legitimate reason unrelated to Nintendo.

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