The struggle for Ghibli
Studio Ghibli is often called the Japanese version of Disney.
With exceptional craftsmanship, often still hand-drawn, animated films like My Neighbor Totoro and Spirited Away have become globally recognized and widely acclaimed. Spirited Away even won an Oscar for best animation film and Studio Ghibli’s latest film, The Boy and the Heron, combines a fascinating story with stunning images. Especially the movie’s fire in Tokyo is an amazing feat of artistry. Just like Disney, Studio Ghibli has its own shops and merchandising, also in countries outside Japan. It’s fair to say to say that it is quite a well-known brand, also in the EU, where its films are available on Netflix.
To protect its reputation, Studio Ghibli filed its figurative mark in the EU for items including bags and clothing, as these are all merchandising products. Unfortunately for Studio Ghibli, this application was met with an opposition based on an older trademark known as GHIBLI for bags and clothing.
The European Trademarks Office concluded that the trademarks were similar and the products identical, creating a risk of confusion. The application for bags and clothing was rejected.
Although this decision seems logical, it still raises questions due to the ruling issued by the Court of Justice in the case Massi against Messi. This lawsuit concerned a trademark application filed by Messi, the famous footballer, for items including clothing. The clothing brand Massi feared that this would lead to confusion and filed an opposition, which they won, as the trademarks were considered similar. But after several appeals up to to the Court of Justice, the Court of Justice accepted the idea of a ‘super reputation’*. In other words, anyone seeing the Messi brand would automatically associate it with the soccer player. This association, the court found, eliminated any risk of confusion—even with a similar clothing brand like Massi. This decision has a certain logic. But at what point can we say that a person or company has a super reputation?
Although this argument did not feature in the opposition against Studio Ghibli, it’s possible to argue that anyone seeing Studio Ghibli’s figurative trademark will automatically think of the film studio given its global reputation, the addition of the word Studio to the trademark and the graphic reference to Totoro (one of its most famous characters) in the logo. Perhaps grounds for an appeal?
* https://ipkitten.blogspot.com/2020/09/cjeu-confirms-no-likelihood-of.html
Author: Arnaud Bos
Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.