Imagineer is determined to get its MEDABOTS trademark back in Europe
09 February 2021
Imagineer, a video game developer based in Tokyo, has released a statement regarding the trademark dispute of MEDABOTS in Europe. The company plans to win back ownership of the trademark after another person claimed and used it to prevent the company from releasing games from the well-known franchise in the region.
According to Imagineer’s press release released on January 13, 2021, Kevin Comadrán De Frutos, an owner of the European Union Trademark registration on MEDABOTS (trademark number: 017847161) filed a request for temporary restraining order with the Commercial Court located in Alicante, Spain, which the court granted on July 15, 2020. The court’s order temporarily prohibits Imagineer from selling games that infringe Comadrán's trademark rights on platforms such as Google Play and Apple Store in a manner that can be downloaded from the EU. Comadrán also filed a trademark infringement action against Imagineer, and the action is currently pending before the Commercial Court in Alicante.
In response, Imagineer filed an objection against the temporary restraining order. The company also filed a counterclaim against Comadrán, seeking to have the MEDABOTS trademark registration transferred to it, or in the alternative to cancel the said registration.
MEDABOTS, or its original Japanese name MEDAROT, is a name of a computer game series that was developed and sold by Imagineer. The game features collection and battles of robots. Since the robots move using medals, it is named medal-robots, or in short MEDAROT. The first game of the MEDAROT series was released in 1997, and since then, Imagineer has been constantly releasing the MEDAROT series of games in Japan.
On the other hand, Imagineer used the name MEDABOTS for releasing the game series in the United States and Europe. Such games were released from around 2002 to 2004.
Kodansha, a Japanese publishing company, used to own a trademark registration on MEDABOTS in the EU, but the registration expired in 2012. Since then, no one owned the trademark registration on MEDABOTS in the EU, until Comadrán obtained the EUTM registration in 2018.
“Comadrán claims that he intends to develop and release his own series of MEDABOTS games,” says Yusuke Inui, a partner at KUBOTA in Tokyo. “However, it seems unlikely that he will actually proceed to develop his own series of MEDABOTS games, which could trigger copyright infringement claims by Imagineer.”
“Although there is not so much information about the current dispute, it looks like this is one of the typical cases in which an unrelated third party who finds that a trademark registration for a well-known brand name has lapsed (or does not exist) obtains a registration for the brand name and enforces it against the original brand owner,” Inui says. “In the meantime, it seems that Imagineer has not been so active in using the MEDABOTS brand name outside Japan (as shown by the fact that the MEDABOTS registration expired in 2012), which might put Imagineer in a difficult position in asserting its counterclaim against Comadrán.”
“In any case, it would be interesting to see what the outcome of the case would be,” he says.
Johnny Chan
