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Australian Consumer Law – Pikachu’s Lessons in Reputation

When asserting trade mark infringement under the Trade Marks Act, it is also common to assert breach of the Australian Consumer Law (ACL). In instances where an infringed trade mark is unregistered, an action may be bought solely under the ACL.

Recently, the Pokémon Company International Inc (AKA the Real Pokémon) secured an injunction under the ACL against Pokemon Pty Ltd, an unrelated company (AKA the Fake Pokemon).

In August last year, the Real Pokémon was made aware of the website “Poke World” with a domain registration in the name of the sole director of the Fake Pokemon. The PokeWorld Website contained a timeline for the launch of a game called “PokeWorld” and the release of non-fungible tokens (NFTs) of a number of existing Real Pokémon characters. It also contained a link to a white paper outlining in depth the details of the PokeWorld. The website also featured an advertisement stating that the PokeWorld game was “brought to you by The Pokémon Company International…” 

 

Image: Fake Pokémon’s face when they are found in breach of the Australian Consumer Law

 

The evidence submitted by the Real Pokémon was that it was concerned that Fake Pokemon would launch PokeWorld to the general public as they had planned, and/or sell Pokémon NFTs without their consent. The Real Pokémon was very concerned about the irreparable and long-term impact of the misrepresentations by The Fake Pokemon and the damage that they and each of their licensees and consumers would suffer if the PokeWorld game was made available and/or the NFT’s were issued.

The Real Pokémon argued that the false representations made by the Fake Pokemon had the potential to seriously damage and erode the significant investments made by the Real Pokemon in developing its brand and reputation, both in Australia and globally. These investments included tightly controlled management of games, product channels, and all forms of representations of the Real Pokémon characters.

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Kings’ Trade Mark Attorney Brisbane team can assist you with trade mark applications in the appropriate class and assert your rights against third parties.

The court found that a significant proportion of consumers would be misled or deceived by the conduct of the Fake Pokemon which amounted to a real threat to the Real Pokémon’s reputation and interests. The court granted an ex parte injunction against the Fake Pokemon (an order against the Fake Pokemon without their submissions or presence at court). The Injunction prevents the Fake Pokemon from using the words “Pokemon” and/or “Pokémon” and/or “PokeWorld” or any name or word that is misleadingly, deceptively, and/or confusingly similar.

This case highlights the importance of protecting intellectual property rights and goodwill. It also serves as a reminder for companies to remain vigilant in protecting their IP. You can read the full decision here.

Our patent attorney Brisbane team at Kings Patent & Trade Marks Attorneys can help protect and enforce your IP rights. We also offer “watch” services for potentially conflicting trade marks so you can catch ‘em all.

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