The Japan Patent Office (JPO) recently dismissed an invalidation petition filed by Disney Enterprises, Inc. against Japanese Trademark Registration No. 5710595. The impugned trademark consists of a wordmark ‘Mary Poppins’. The JPO found that ‘Mary Poppins’ is not a well-known trademark and not famous as a source indicator of Disney. The invalidation case is having no. 2019-890040.

The disputed mark was consisting of the word ‘Mary Poppins’ in standard character which was applied for registration on date February 28, 2014. However, the trademark was applied in respect of caring for babies [excluding services provided at facilities]; babysitting in class 45. To everyone’s astonishment, the impugned trademark did not face any refusal during the substantive examination and it was registered on date October 17, 2014.

Mary Poppins Inc. is the applicant of the disputed mark. The company is engaged in offering babysitting services in Kobe, Japan since its establishment in the year 1988. Japan Trademark Law has a quite interesting provision to retroactively invalidate trademark registration for certain restricted reasons when an invalidation petition being filed within a five-year statute of limitations.

However, Disney filed an invalidation petition against the disputed mark on the date July 18, 2019, i.e., three months before the lapse of the limitations period. Disney argued in its petition, “The mark unquestionably freerides on the world-famous Walt Disney film ‘Mary Poppins’ and thus relevant consumers would associate the disputed mark with Disney when used on the services in question.”

Mary Poppins is an American musical film that was released in the year 1964. The movie featured the debut of Julie Andrews. It was a children’s classic. Interestingly, Mary Poppins is considered to be one of the finest works of Walt Disney’s productions. The movie was based on the original books authored by P. L. Travers. The JPO Invalidation Board admitted to some extent that Mary Poppins holds a certain degree of reputation and popularity because of the title of everyone’s favorite Walt Disney film and also the name of the main character of the film.

In the meantime, the Board found: “If ‘Mary Poppins’ has played a distinctive role in indicating a source of Disney’s goods or services. The mere fact that goods featuring the Walt Disney films and their characters are merchandised at the Tokyo Disney Resort and Disney Shops in Japan is insufficient to prove Disney has used ‘Mary Poppins’ as a source indicator to identify their business. In so far as ‘Mary Poppins’ has not been recognized as a source indicator, but a title of the world-famous Walt Disney film or the main character of the film, it is unlikely that relevant consumers would consider the disputed mark ‘Mary Poppins’ used on the services in question coming from Disney or entities systematically or economically connected with the opponent.”The JPO ruled in favor of the disputed mark stating that the mark shall remain valid and thus, dismissed the invalidation petition in its entirety.

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