In a surprising turn of events, a modest family-run supermarket in San Ramón, Costa Rica, has successfully defended its name, ‘Super Mario’, against a trademark challenge from the global gaming powerhouse, Nintendo. This legal victory underscores the complexities of trademark law and highlights the challenges small businesses can face when confronted by large corporations.
Background of the Dispute
The ‘Super Mario’ supermarket, a staple in the San Ramón community for decades, derives its name from the common Costa Rican abbreviation ‘super’, meaning ‘supermarket’, combined with the owner’s name, Mario. The store has no affiliation with Nintendo’s iconic video game character. In 2013, owner José Mario Alfaro González registered the ‘Super Mario’ trademark to solidify his business’s identity. However, upon seeking to renew this trademark in 2024, González encountered unexpected opposition.
“I would like to greatly thank my legal and accounting advisor José Edgardo Jiménez Blanco who was in charge of the registration and the subsequent fight for the trademark rights. For a moment we thought about throwing in the towel. How were we going to win against such a commercial monster? Especially with the number of legal documents presented by them to ensure victory.Well, luckily Edgardo and I stood firm and a few days ago we received the good news.”
Nintendo’s Legal Challenge
In July 2024, Nintendo of America filed an official opposition to González’s trademark renewal. The company argued that the supermarket’s name could cause confusion due to its association with Nintendo’s famous ‘Super Mario’ franchise. They also contended that the store’s use of the name might dilute their brand’s distinctiveness.
The Supermarket’s Defense
González, with the assistance of his legal advisor, José Edgardo Jiménez Blanco, mounted a defense emphasizing the local and unrelated nature of their business. They highlighted that ‘Super Mario’ is a common combination in Costa Rica, with ‘super’ referring to ‘supermarket’ and ‘Mario’ being a prevalent personal name. Furthermore, they pointed out that their store’s branding bore no resemblance to Nintendo’s character and that their primary focus was on selling essential groceries, not video games or related merchandise.
Legal Proceedings and Outcome
After reviewing the arguments, Costa Rica’s National Register, the country’s trademark authority, sided with the local supermarket. They concluded that while Nintendo holds trademarks for ‘Super Mario’ in various categories, these do not extend to supermarkets or the sale of groceries. This decision allowed González to retain the ‘Super Mario’ name for his store.
Expressing his gratitude, González stated, “I would like to greatly thank my legal and accounting advisor, José Edgardo Jiménez Blanco, who was in charge of the registration and the subsequent fight for the trademark rights. For a moment, we thought about throwing in the towel. How were we going to win against such a commercial monster? Especially with the number of legal documents presented by them to ensure victory. Well, luckily, Edgardo and I stood firm, and a few days ago, we received the good news.”
“This is a giant step towards our vision and the reason a company this big is getting picky is because we are making ourselves noticed. SUPER MARIO is here to stay.”
Broader Implications
This case highlights the challenges small businesses can face when their branding inadvertently intersects with that of major corporations. It also underscores the importance of understanding local contexts and the nuances of trademark law. While Nintendo has a history of vigorously defending its intellectual property, this instance demonstrates that outcomes can vary based on jurisdiction and specific circumstances.
As of now, there is no indication that Nintendo plans to appeal the decision. The ‘Super Mario’ supermarket continues to operate under its original name, serving the San Ramón community as it has for many years.
- #DavidVsGoliath
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- #NintendoLegalBattle
