Last year, we achieved a landmark victory in the case of Ghibli vs. the renowned animation studio Studio Ghibli. Recently, the appeal period expired, making this decision final.
The dispute arose when Studio Ghibli applied to register its logo in the EU, covering categories such as bags and umbrellas (Class 18) as well as clothing and footwear (Class 25)—which overlapped with my client’s trademarks.
After we filed an opposition, negotiations continued for a long time. However, when it became clear that no agreement could be reached, the case was transferred to the EUIPO.
Rather than detailing the extensive work behind gathering evidence in favor of Ghibli, I will highlight the key arguments that the EUIPO considered when reaching its decision.
🔍 Key Arguments:
1️⃣ Studio Ghibli’s Argument: The logo features the well-known character Totoro, which, in their view, makes the mark distinctive.
🔹 EUIPO’s Decision: The character is not sufficiently famous to grant the mark distinctiveness. Moreover, in composite trademarks, consumers primarily focus on the textual element rather than the imagery.
2️⃣ Our Argument: The European audience does not perceive the Japanese kanji as part of the verbal element of the mark.
🔹 EUIPO’s Decision: The kanji characters fall into the category of “non-European symbols”, which are perceived as decorative elements. The average consumer cannot read, recall, or reproduce them, so they do not contribute to the distinctiveness of the mark.
3️⃣ Our Argument: The word “Studio” does not enhance distinctiveness.
🔹 EUIPO’s Decision: The term “Studio” can be used in various contexts—not only in film production but also in the fashion industry (for designing clothing, hats, and bags). Since this word is widely used in fashion, it does not add sufficient distinctiveness to the mark.
📌 Conclusion:
The Studio Ghibli logo is visually, phonetically, and conceptually similar to the Ghibli trademark because it contains the identical verbal element “GHIBLI”.
💡 Final Decision:
EUIPO completely refused Studio Ghibli’s trademark registration in Class 25 (clothing and footwear) and allowed registration only for umbrellas in Class 18 (bags and accessories).