Studio Ghibli v Ghibli: Partial Opposition to the Japanese anime studio’s EUTM

This Kat has always found Japanimation to his liking, particularly the films produced by Studio Ghibli. Their films and characters (e.g., Kiki, Calcifer, No Face, Totoro) are simply great. The Opposition Division of the European Union Intellectual Property Office has recently issued a ruling on a figurative mark registered in 2020 by Studio Ghibli. This Kat also found out that this Japanese studio had only taken trade mark protection steps in the EU over the last few years.

A Kat cosplaying as Totoro

Facts

On 7 February 2020, Kabushiki Kaisha Studio Ghibli registered the EU figurative mark 18 193 928 designating various goods and services in classes 9, 14, 16, 18, 20, 21, 24, 25, 26, 28, 34 and 41. On 29 June 2020, Ghibli S.R.L. filed an opposition to this registration on the basis of its earlier EU figurative mark 17 931 716 designating classes 18 and 25, based on Article 8(1)(b) EUTMR.

Analysis

Relying explicitly on Article 8(1)(b) EUTMR, the Opposition Division divided its analysis into several steps. It is important to note the limitation of this analysis to goods in classes 18 and 25, which were the only classes concerned by the opposition.

Goods and public

The Opposition Division proceeded to the comparison of the goods. On the one hand, it found that “the contested pouches; charm bags (omamori-ire) are included in the broad category of the opponent's bags”, “the contested vanity cases, not fitted are included in, or overlap with, the opponent's cosmetic purses”. On the other hand, it noted that “the contested umbrellas and their parts have no relevant commonalities with any of the opponent’s goods in Class 18 and Class 25. These goods are dissimilar to all the opponent's goods in Classes 18 and 25”.

The Opposition Division concluded that “the contested goods are partly identical, partly similar to varying degrees and partly dissimilar. The ones found identical and similar to varying degrees target the public at large whose degree of attention is average”.

Studio Ghibli's EUTM

Signs comparison

The Opposition Division proceeded to the comparison of the two signs. It recalled that “the global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components”. This statement is in line with C-251/95, Sabèl, § 23.

The Opposition Division noted that both signs contained the verbal component Ghibli, which would be understood as a “hot or dry wind” by part of the relevant public. Therefore, its distinctiveness is normal for all the relevant goods and services.

As regard the verbal element “STUDIO” of the contested trade mark, the Opposition Division underlined that it “will be recognised throughout the EU and associated by the relevant public with the place where the relevant goods, such as clothing, headgear or various bags, are created or designed. Therefore, it has a diminished capacity to serve as an indicator of trade origin and it has a weak distinctive character, if any”.

Concerning the non-European characters of the contested of the EUTM, the Opposition Division held that they will “be perceived as a figurative element that the relevant public is unable to read and memorise”. Thus “their impact on the perception of the sign is very low, as the relevant public will not attribute any trade mark significance to these characters”. Some enlightenment is needed, since they mean “Studio Ghibli” in Japanese.

As regard the figurative element of the contested EUTM, the Division Opposition rejected the argument stating that it is “a well-known, unusual and highly distinctive cartoon character named ‘Totoro’”. Indeed, it held that it is “restricted in its examination to the facts, evidence and arguments provided by the parties. Whether or not it would be understood by part of the relevant public as referring to a well-known cartoon character and in the absence of evidence to support this, this element would be distinctive to a normal degree”. It is worth noting that figurative elements have, as a rule, a lower impact on their overall impression than verbal elements.

Visual comparison

The Opposition Division held that both signs are visually similar to a slightly below-average degree. Indeed, they coincide in the verbal element ‘GHIBLI’ but differ in the contested sign’s verbal element ‘STUDIO’ that is weak, if distinctive at all. They further differ in the signs’ figurative elements, stylisation and the contested sign’s non-European characters.

Aural comparison

The Opposition Division concluded that the signs are aurally similar to an average degree. Indeed, they coincide in the sound of the element ‘GHIBLI’. However, they differ in the sound of the contested sign’s element ‘STUDIO’ that has a weak distinctive character, if any.

Conceptual comparison

The Opposition Division distinguished two situations. For the part of the public that perceives a meaning in the signs’ common verbal component ‘GHIBLI’, the signs are conceptually similar to an average degree. For the part of the public that will not perceive any meaning in the common verbal component ‘GHIBLI’ but will perceive the concepts conveyed by the contested sign’s verbal component ‘STUDIO’ and the figurative element depicting a rabbit or a cat, the signs are not conceptually similar.

Distinctiveness assessment

The Division held that “the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal”.

Global assessment

In the end, the Opposition Division found a likelihood of confusion to subsist on part of the public. Hence, the registration of Studio Ghibli’s EUTM was rejected for the goods identical and similar to varying degrees to those of the earlier trade mark.

Thoughts

In addition to the above comments, this decision logically leads this Kat to question Studio Ghibli's late protection strategy within the EU, given how long they have been in existence (1985) and how widely their films (e.g., in France, systematic cinema releases, availability on Netflix) and derivative products are distributed in the EU. It is therefore crucial to safeguard one's interests by promptly undertaking the requisite registrations, rather than awaiting the advent of a dispute or the chance of a late registration.

When a figurative element such as an apparently well-known character (e.g., Totoro) is included in a EUTM, it is important to bring strong evidence of its knowledge by the average public, even if such knowledge might appear to be obvious.