6 August 2019TrademarksSarah Morgan

Disney cites controversial TM in opposition

Disney has cited its own controversial trademark ‘Hakuna Matata’ in an opposition against a Chinese company’s US trademark application.

Shenzen-based Qianhai Qisheng Supply Chain Management Shenzhen Co applied to register ‘ HakunaMatata’ in November last year, covering balloons, confetti and infant toys in class 28.

Disney’s own trademark ‘ Hakuna Matata’ was registered in 2003 in class 25 (clothing, footwear and headgear). The entertainment conglomerate applied to trademark the phrase, which featured heavily in its 1994 film “The Lion King”, in 1994.

Registration of the phrase as a trademark came under fire last year, with a petition calling for Disney to drop the mark. The phrase comes from the Swahili language spoken widely across East Africa, meaning “no worries” or “no problem”.

Shelton Mpala, a Zimbabwean-Canadian activist who started the petition, said that “Disney can't be allowed to trademark something that it didn’t invent”. The petition is still gaining signatures today—196,576 have signed at the time of writing.

In its opposition, filed on Wednesday, July 31 and instituted two days later, Disney claimed that the applied-for mark is “identical in sound, appearance, connotation, and commercial impression” to its own mark.

Qianhai Qisheng’s submitted its application months before the reimagined adaption of the film was released in July this year.

The latest version features the voices of Beyoncé, Donald Glover, Seth Rogen, Billy Eichner, and James Earl Jones, among numerous other actors. In the opening weekend, the film earned more than $191 million.

“Opposer’s consumer products bearing opposer’s ‘Hakuna Matata’ mark are closely tied to opposer’s well-known and famous ‘The Lion King’ franchise, including using the character names and/or displaying images of several of opposer’s well-known and famous characters such as Simba, Timon, and Pumbaa,” said the opposition.

Disney added that it has used and licensed the use of names, marks, characters and elements from “The Lion King” across many products, including balloons, party supplies and children’s toys.

According to the entertainment conglomerate, the Chinese company’s mark will cause confusion and will damage Disney so it wants the registration of the ‘HakunaMatata’ mark to be refused.

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