(underlined legal terms point to entries in our IP Lingo dictionary)
Context: Until its patent infringement lawsuit against Palworld maker Pocketpair, Nintendo had a reputation for choosing its battles over intellectual property rights wisely. But that case calls Nintendo’s more recent judgment into question. For example, a Japanese patent attorney is unconvinced that Palworld implements the “smooth switching” of riding objects over which Nintendo wields a software patent (January 26, 2025 games fray article).
What’s new: According to various media reports, Nintendo unsuccessfully opposed the registration of a Super Mario trademark by the owner of a small grocery store in Costa Rica in Nice class 35 (a services class), though what was never at issue is Nintendo’s ownership of the same trademark in class 28 (which includes, among other things, video games). The Registro Nacional (National Register), Costa Rica’s government agency for trademark and certain other registrations, rejected Nintendo’s challenge to the little shop’s trademark in mid December.
Direct impact: We have not found out yet whether Nintendo has appealed that decision to the Tribunal Registral Administrativo (Administrative Register Court). If it has, then the outcome could still be a different one as there are signs of the store owner trying to exploit the world famous Super Mario brand. If there is no appeal (or if there is one but it doesn’t succeed), Nintendo will have to live with not only one store but hypothetically, at some point, an entire retail chain in Costa Rica bearing the Super Mario name and using a logo that clearly alludes, through its style, to the video game character. It appears, however, that the Super Mario grocery store has ceased to engage in other exploitative conduct (such as in-store decoration that looks like the famous game character).
Wider ramifications: Many countries have patent and trademark offices that manage registrations of either kind, trademarks and patents are fundamentally different intellectual property rights. Even copyright, while clearly distinguishable from patents, is somewhat closer in substance to patents than trademarks are, given that patents and copyrights protect creations of the mind (and software often involves both). But there are formal similarities between how patents and trademarks are registered, just that patents are examined with a far greater effort.
Here’s a picture of the Costa Rican trademark registration for Super Mario, dated December 10, 2024:
It is a mixed registration: a word mark (Super Mario) and a logo. The logo you see in the document above uses a font that is not identical, but rather similar in style, to the Super Mario Bros. logo:
We have found various Spanish-language articles on this, with particularly interesting pictures to be found on a Mexican gaming site (January 29, 2025 Xataka article).
The story is that José Mario Alfaro González founded a supermarket in Costa Rica in the early 1970s, well over a decade before the first Super Mario Bros. title. Supermarkets are commonly referred to as “super” in Costa Rica and some other Spanish-speaking countries). Mr. Alfaro González combined that term with his second given name: Super Mario. There may not be hard evidence out there that this was really the name of that store from the beginnings, but it may actually be the case. It’s plausible.
A trademark search website shows the following results. First, trademarks that have expired:
Second, current or at least recent registrations:
The store owner filed a trademark registration for “Super Mario” under Nice (named after the French city) classification no. 35 (a broad services category) first in 2013 and then, again, in 2024. Nintendo first registered Super Mario Bros. in Costa Rica in 1990, initially under classification no. 28 (a games category that includes video games) and then, in 2021, “Super Mario” in four categories, among them no. 28. In response to the trademark application the store owner filed last year, Nintendo intervened and made a competing request for the registration of “Super Mario” in category no. 35, which failed.
If that was the whole story, and if one ignored the store logo’s similarity in style to the Super Mario Bros. logo, one might intuitively suspect bullying by a large corporation that doesn’t even leave a small store owner alone. While games fray follows Nintendo’s patent assertions against Pocketpair with skepticism, the Costa Rican dispute is far more legitimate than it may appear at first sight.
The first thing to understand here is that trademark registrations are specific to classes of produts and services, but extremely famous trademarks like Walt Disney and Coca-Cola cannot just be used for any type of product or service without a license.
The next key thing to consider is that trademarks are a category in which owners must demonstrate that they defend their rights. Condoning infringements, or competing registrations of a confusingly similar kind, would weaken their position in the future.
If Nintendo had obtained a registration in class 35, it could have tried to use that right to force Mr. Alfaro González (whose son is now running that store) to change the name of the store. A court could have agreed. It could also have determined that this use was long-standing and only locally relevant, making its continued use lawful even if Nintendo owned the trademark. But Nintendo didn’t secure a class no. 35 Super Mario trademark in the first place.
If the store was indeed named “Super Mario” before the famous video game launched, then there was no bad faith in play at the time. But the use of a somewhat similar font will not have been a coincidence. And the picture below (from the Xataka article mentioned further above) shows that they even decorated the store in a way that alluded to the video game character:
According to the article, they have stopped doing the above so as not to get sued by Nintendo for copyright violations (images like the Mario design are protected by copyright).
It could be that Nintendo has given up on this matter. Otherwise we will hear when there is a court ruling that could affirm or reverse the decision by the trademark office.