NINTENDO recently applied in the European Union to trademark the letters NSW in reference to the shorthand abbreviation of its popular portable gaming console, the Nintendo Switch.
This move has come as a surprise to approximately everyone in Australia, as it ignores the fact that NSW is, well, the official state abbreviation for New South Wales.
While internet commenters have had fun with jokes about Mario taking over as Premier of New South Wales, the reality is that the entertainment giant isn’t deliberately planning to take the state’s abbreviation away.
Judy Zhu is an Associate at Brisbane-based intellectual property and technology law firm Eaglegate Lawyers and said Nintendo’s trade mark move did not mean the console and game company planned to take over Australian state designators.
“The NSW move is purely to protect the preferred shorthand for its Nintendo Switch console,” she said.
“New South Wales has been NSW for as long as we can all remember, and so they [the state] could not be forced to stop using their own three letter designator entirely.
“There is a Crown Law exception, so even if someone gets the registration the government can force a license to use the trade mark for its own purposes.”
Trademarks only apply in the country/region they are registered in, and generally only in relation to distinguishable products (for example, “Apple” is not trademarkable as a name for the fruit, but it is for computers and smartphones); and it is entirely possible Nintendo may only register “NSW” as a trademark overseas and not here.
Ms Zhu said if Nintendo tried to trademark “NSW” in Australia they may run into some opposition, although it may depend on the context the letters were being trademarked for.
“The NSW or Federal government could oppose the trade mark move, but the NSW government does not make computer consoles … so they have no prior reputation for computer consoles under the name NSW” she said.
“That said, IP Australia could object to any such trade mark application filed in Australia on the basis that those letters are not inherently adapted to distinguish Nintendo’s goods and services from other traders’ goods and services, or that it is a false indication of geographical origin given the consoles are not from NSW.
“Even then, it is important to remember that traders can use terms descriptively. Traders from NSW have a legitimate desire to use those letters to indicate the geographical origin of their goods and services.
“If Nintendo’s goods don’t actually originate from NSW, then other parties could oppose the application by arguing that the use of the letters NSW in connection with the goods covered by the application would be likely to deceive or cause confusion because of the connotation of geographical origin in the mark” she said.
Nintendo has not currently filed a trademark application for “NSW” in Australia, but it is the owner of over 800 other trade marks here.
