Super Mario: Costa Rican supermarket wins trademark dispute against Nintendo

Don José Mario Alfaro González, known as Mario, operates a supermarket in San Ramón, Costa Rica, called ‘Super Mario.’ According to the supermarket’s Facebook page, González founded the store in 1973—years before Nintendo’s red-capped video game protagonist first appeared in ‘Donkey Kong’ or the release of the first ‘Super Mario Bros.’ game. 

The grocery store’s logo features a yellow and dark blue design with a shopping cart and the wording “Super Mario – Su lugar de confianza,” which translates to “Super Mario – Your Trusted Place.”

The supermarket’s building is white with yellow and dark blue stripes, and employees wear shirts in the same colors. Apart from the ‘Super Mario’ wording, there is no reference to Nintendo.

In December 2013, at the urging of his son, González applied to register his SUPER MARIO trademark in Costa Rica, using a yellow and blue design without the shopping cart or the “Su lugar de confianza” wording. The application covered supermarket services under Class 35 and was granted without objection from Nintendo. González also applied to register his logo as a trade name for use in connection with supermarket services. That registration was also granted without objection and is valid as long as the store is open. 

Nintendo challenges renewal 

In March 2024, González’s son filed to renew the trademark registration. This time, Nintendo objected. According to a Facebook post by González’s son, the objection stemmed from the growing attention the supermarket was receiving on social media. 

Nintendo holds a Costa Rican trademark registration for SUPER MARIO covering video games (Class 9), bags (Class 18), clothing (Class 25), and toys and games (Class 28).

Nintendo argued that its SUPER MARIO mark is famous in Costa Rica and that González acted in bad faith because he: 

• Sold more than basic grocery products and used that classification to obscure the imitation. 
• Posted images of Nintendo’s Mario character on Facebook to promote the supermarket. 
• Stocked products featuring Super Mario characters, indicating prior knowledge of Nintendo’s SUPER MARIO mark. 

González fights back 

González considered renaming his store but ultimately decided to contest Nintendo’s claims. He argued that his supermarket primarily sells basic grocery products and has never promoted Nintendo’s products (however, it may have posted images of bootleg Nintendo products appearing on its Facebook page). He also pointed out that in Costa Rica, ‘super’ is commonly used as slang for ‘supermarket.’

The Costa Rican trademark office ruled in favor of González. In its decision, the office ruled that Nintendo had not submitted sufficient evidence of fame in Costa Rica. It also pointed out that while Nintendo owns SUPER MARIO trademark registrations, none covered basic grocery products. 

Further, the Costa Rican trademark office found that González had not acted in bad faith and that there was no likelihood of consumer confusion because shoppers would not associate the video game franchise with a supermarket. Accordingly, González’s registration was renewed.

Public reaction and Nintendo’s next steps 

Nintendo is not expected to appeal the decision. However, the multinational video game company has since filed a new Costa Rican trademark application to register its SUPER MARIO logo (see below) in Class 35 for use with online retail services, advertising services, and sales promotion. 

Online, the public overwhelmingly supported González. Many social media users shared they were glad to see Nintendo lose, calling the legal challenge petty and greedy. Some posts even questioned the judgment of Nintendo’s legal team.

Conclusion

The case highlights a common issue in trademark law. The use of a mark by third parties can weaken its distinctiveness and potentially harm a brand’s reputation if those third parties offer lower-quality products. However, owning a trademark for specific goods and services does not necessarily grant exclusive rights across all industries. 

Legal outcomes may differ if a company can establish a strong relationship between its commercial space and that of its competitor—such as apparel and handbags—or prove the mark’s notoriety with appropriate evidence. Had Nintendo been able to demonstrate the SUPER MARIO mark’s fame in Costa Rica—or if the company had a Costa Rican registration for a notorious mark—the ruling might have gone in its favor. 

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