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Nintendo "could" lose Wii U trademark rights in England

R

Rösti

Unconfirmed Member
For those of you who seldom visit the Wii U speculation threads, let me get you up to speed before tackling the main issue here. On the 27th of January this year, Northwich based company Information Technology Junction Limited opposed the Wii U trademark (number 010377331) on grounds of "Unfair advantage /detriment to distinctiveness or repute".

Information Technology Junction Limited is a company that deals with architectural technical consulting and labor recruitment and shouldn't have any interest in the Wii U trademark at all. However, they have a trademark called "U" (number 2563824); this trademark is only registered in England through the English Patent Office, as far as I can see it doesn't appear in the databases of the Office for Harmonization in the Internal Market (handles European trademarks). Anyway, this company appears to have some affiliation with the domain http://www.u-do.com/ (owned by a certain Christopher Hartley, I do not know if he works for Information Technology Junction). And present on that web page is a certain "U" logo, and it is the "U" part of Wii U that this company is opposing.

The grounds are as full:
Article 8(5) CTMR - the use without due cause of the contested mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
Click to expand...

This is explained even more in THE MANUAL CONCERNING OPPOSITION
PART 5 TRADE MARKS WITH REPUTATION ARTICLE 8(5) CTMR:
According to Article 8(5) CTMR upon opposition by the proprietor of an earlier
trade mark, within the meaning of paragraph 2, the trade mark applied for
shall not be registered:
where it is identical with or similar to the earlier trade mark and is to be
registered for goods or services which are not similar to those for which
the earlier trade mark is registered, where in the case of an earlier
Community trade mark the trade mark has a reputation in the
Community and, in the case of an earlier national mark, the trade mark
has a reputation in the Member State concerned and where the use
without due cause of the trade mark applied for would take unfair
advantage of, or be detrimental to, the distinctive character or the
repute of the earlier trade mark.
Click to expand...

To summarize, this U-DO company/Information Technology Junction Limited or whoever is responsible for that web page feels that the "U" in U-DO is so important to its business that Wii "U", if introduced to England, would hurt it.

Its business statement seems rather vague, but this is what is says on the webpage:

Small independent businesses are the social glue that binds communities. If we support them we all benefit. However unjust amounts of profits are being made by large organisations, from money that we spend with them, but together we can change that.

We are taking action by building a business that will re-invest 75% of the profits into your community every time you spend with us. And what’s more because it is your money, you say where you want it spent.
Click to expand...

Looking through the filings of this opposition, it is clear that Nicola Holbrook, Managing Director of U-DO, is the opponent. And these are the facts easily put.

Up until today (or actually the 24th of April, though the following documents appeared first only yesterday/today), the OHIM has been conducting an admissibility check to see if the opposition is admissible or not. On the 24th of April, the OHIM sent both Information Technology Junction Limited and Nintendo a letter to notify that the opposition was deemed admissible. I quote from the letter sent to the first party:

Your opposition has now been found admissible at least insofar as it is based on the following earlier right: GB 2563824

Should the opposition be based on any other earlier rights, please not that
the exmination of the admissibility of these other earlier rights has not yet taken place.
This is in line with the new practicate established in Communication N0 5/07 of
12/09/2007 of the President of the Office on changes of practice in opposition
proceedings.

If you have not already done so, you must substantiate the above earlier right which
has been found admissible, and any other earlier rights filed as bases of the
opposition, within the time limit set below. If this is not the case any non-
substantiated earlier rights will not be taken into account.

The relevant periods and time limites for the present proceedings are as follows:

1. The "cooling-off" period expires on 06/07/2012. The adversarial part of the
opposition proceedings will begin on 07/07/2012.

2. The time limit for you to substantiate the earlier rights and submit further material
expires on 06/09/2012.

3. The time limit for the applicant/holder to submit its observations in reply expires on 06/11/2012
Click to expand...

Source: http://esearch.oami.europa.eu/copla/trademark/data/010377331/download/I_OP_0002707710

The letter to Nintendo can be found here: http://esearch.oami.europa.eu/copla/trademark/data/010377331/download/I_OP_0002707708

This means now that Nintendo and Information Technology Junction Limited will negotiate an agreement. I don't see Nintendo stepping down, but even though Information Technology Junction is a very small company (in comparison to Nintendo) I don't see it backing down that easily either, especially as this is claimed only for England.

The "cooling-off" period is as follows:

The "cooling-off" period
If the notice of opposition is found admissible, OHIM sends a notification to both parties setting deadlines for the proceedings. The proceedings start with a period during which parties can negotiate an agreement, the so-called "cooling-off" period. During this period the parties are given the possibility of terminating the proceedings without incurring additional costs.

The cooling-off period expires two months from the notification of admissibility. It can be extended for 22 months and can last for a total of 24 months. Once the cooling-off period has expired, the adversarial part of the proceedings begins.
Click to expand...

Source: http://oami.europa.eu/ows/rw/pages/CTM/regProcess/oppositionProceedings.en.do

Proceedings will be either that the two parties come to terms and settle an agreement prior to the expiration date of the "cooling-off" period, or the period may be extended. Suggestions have been also that Nintendo may pay this company to avoid any further problems. If anything, I think it is rather silly to believe that Nintendo will accept defeat regarding this. Nintendo is a vastly larger company than Information Technology Junction and most certainly have more talented attorneys. There is however an outside chance that Nintendo cannot call its next generation console Wii U in England, and has to resort to another name. OHIM may have something to say as well.

Regardless of what will happen, Nintendo evidently has some trademark problems to deal with. The question here is if they are willing to call Wii U something else in England or if they will show muscles against this opposer. And also, could this affect what they will show at E3?

Trademarks are searchable via CTM-Online and eSearch Plus, courtesy of OHIM.
 
S

ScreenSplitter

Member
Wouldn't be the first time a system's had to change it's name in the UK, either due to copyright or marketing issues.

And I much prefer my Sega Megadrive <3
 
S

Skiesofwonder

Walruses, camels, bears, rabbits, tigers and badgers.
Great work on finding all of this Rosti. Should be interesting because Nintendo is big on having a universal name for their systems around the world.
 
R

Red Arremer

Member
ggpYG.gif
 
J

JJConrad

Sucks at viral marketing
From now on all post on NeoGAF shou™ld look something like this!

And poor England, they really like their extra "u™"'s, too.
 
K

King_Moc

Banned
Doesn't the infringement need to be within the same kind of business? Still, the claim seems more legitimate than most purely do to the fact that they haven't pretended to not notice until years after the release, thus maiximising their 'winnings'.
 
B

BurntPork

Banned
Zee-Row said:
I'm not a fan of the Wii or Wii U name in general.
Click to expand...

They're going to keep Wii no matter what. "Casuals" don't identify with the Nintendo brand; they identify with the Wii brand.

Though, maybe they could find a way to keep the two i's and that would be enough.
 
Dwight Schrute

Dwight Schrute

Member
The distinctive part is "Wii", moreover the Wii trademark is much more well known than "u-do", so customer will simply thinks it's a declination of the Wii. There isn't any risk of confusion.
 
K

Kyou

Member
On the one hand there is no way this will hold up and no way Nintendo will lose the trademark.

On the other hand Wii U is kind of a silly name
 
R

RiverBed

Banned
Even if 'U' is taken, isn't the thing call 'Wii U' as in one name together so it wouldn't matter if just half that name is taken?
 
L

lupinko

Member
ScreenSplitter said:
Wouldn't be the first time a system's had to change it's name in the UK, either due to copyright or marketing issues.

And I much prefer my Sega Megadrive <3
Click to expand...

I thought the name change was only for North America, the Genny was also Megadrive in the Asia region as well.
 
D

Demoncarnotaur

Member
I would love for the name to change, but I doubt this will effect it. If they are going with the name then they believe in it and have invested in it, and I doubt they would change it so last minute due to something like this.
 
F

FoneBone

Member
ScreenSplitter said:
Wouldn't be the first time a system's had to change it's name in the UK, either due to copyright or marketing issues.

And I much prefer my Sega Megadrive <3
Click to expand...

That was in a far less globalized age - it doesn't fly nowadays, companies value keeping the brand consistent internationally.
 
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