10th February 2023 - Alessandra Maxine

Pokémon is perhaps one of the biggest and long-running franchises in the gaming world. Anyone born in the digital age has heard of or even played a Pokémon game.

Pokémon is a Japanese media franchise founded by Nintendo, Game Freak, and Creatures, originally a series of video games and a trading card game. Pokémon is short for “pocket monsters” where the word is a contraction of two Japanese words, “Poketto” and “Monsut”.

The franchise has its roots in a gaming magazine in the early 1980s in Japan called Game Freak written by Satoshi Tajiri and illustrated by Ken Sugimori. Pokémon is the second largest franchise behind Mario, starting in February 1996 as a Japanese role-playing game where you play a Pokémon trainer travelling the world collecting little pocket monsters and training them in battles with other Pokémon.

As of 2023, there are 1,008 total Pokémon across all nine generations.

Background

The Pokémon Company International (TCPI) is a subsidiary of The Pokémon Company in Japan. The company is responsible for brand management, licensing, and marketing any form of Pokémon Entertainment outside Asia. Pokémon Pty Ltd (PPL), also known as Kotiota Studios, advertised an NFT game called PokéWorld which included characters from the Pokémon franchise.

TCPI sought an urgent injunction from the Federal Court of Australia under the Australian Consumer Law on the basis that the conduct of PPL was misleading or deceptive, giving the false impression that TCPI was affiliated with, associated with, connected in the course of trade with, approved by or otherwise authorized by The Pokémon Company or Nintendo, when that was not the case.

The Case

The central argument in the proceedings was the misleading conduct on the part of the respondents through misrepresenting a relationship with The Pokémon Company and the unauthorized use of characters from the Pokémon franchise.

The Federal Court agreed and ordered that PPL and Kotiota Studios:

• stop using the Pokémon name, characters and assets
• stop representing a relationship with TPCI and that the Pokémon products were legitimately licensed.

Justice Collier observed:

“I am satisfied that a significant proportion of consumers would be misled by the conduct of the respondents into believing that there is a legitimate connection in the course of trade between the [operators of PokeWorld], and [The Pokémon Company]. I am satisfied that if the respondents were to commence operating a game under the name PokeWorld, or selling Pokémon NFTs, a substantial number of consumers and traders would be likely to be deceived into using the PokeWorld game or buying Pokémon NFTs. I further consider that there is a real prospect of reputational risk to [The Pokémon Company] from the conduct of the respondents (both historical and proposed), and that it is likely to suffer damage to its interests should the respondents not be immediately restrained pending final determination of the originating application.”

Summary

This decision illustrates the importance of protecting your intellectual property assets, maintaining an active monitoring strategy and taking proactive action to deter the unauthorized use of your proprietary property.

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Alessandra “Max” Maxine, Digital Administrator

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.