In 1981, Nintendo was a small player in the American market. Then came Donkey Kong, an arcade game in which a carpenter named Jumpman climbs a construction site to rescue a woman from a barrel-throwing gorilla. Jumpman would soon be renamed Mario. The game was an instant hit, and it soon caught the attention of Universal Studios.

Universal v Nintendo

Universal took the view that Donkey Kong infringed its rights in King Kong, a character it claimed to own. In 1982, it gave Nintendo and its licensee Coleco 48 hours to stop selling the game. Coleco agreed to pay Universal royalties. Universal then wrote to Nintendo's other licensees, telling them to stop using the characters, take a licence from Universal or face legal proceedings. Several of them paid. Nintendo refused. Universal sued and Nintendo instructed John Kirby, a New York litigator, to defend it.

Kirby soon found the weakness in Universal's case, and it came from Universal itself. In 1975, in a dispute with RKO, the studio behind the original King Kong film, over the right to remake it, Universal had argued that the King Kong story and characters were in the public domain and free for anyone to use. It succeeded. Seven years later, it was asking a different court to accept that it held exclusive trade mark rights in King Kong.

The court did not accept the claim. The Court found that King Kong did not identify a single commercial source, so Universal had failed to establish the rights it asserted. Even if those rights existed, he held, consumers were unlikely to confuse the comical, childlike gorilla in Nintendo's game with the ferocious ape of the films. The Court of Appeals upheld the decision in 1984.

Nintendo then pursued its own claims against Universal, and here Universal's earlier position carried real weight. The courts took it into account in assessing whether Universal had acted in good faith. The inconsistency was compelling evidence that Universal knew how weak its claims were, even as it pressed them against Nintendo and collected payments from several licensees. In 1986, the Second Circuit upheld the findings against Universal, which was ordered to pay Nintendo approximately $1.8 million in damages, legal fees and related costs.

Universal's difficulty was not simply that it had lost. Its own earlier arguments had helped Nintendo show why its claims should never have been pursued.

Altron v Tracker

More than forty years later, a South African court dealt with a similar contradiction in a very different setting.

In Altron Ltd v Tracker (Pty) Ltd [2026] ZAGPPHC 484 (14 April 2026), Altron had adopted the mark TAKE ON TOMORROW. Tracker owned registrations for TAKING BACK TOMORROW in classes 35, 37, 39 and 45, which it had not used since 2016. Altron applied under section 27(1)(b) of the Trade Marks Act 194 of 1993 to remove them from the register for non-use.

Only an "interested person" may bring such an application, and this is where Altron's case came apart. Altron maintained that its interest arose from the possibility that Tracker's registrations might hamper its intended use of TAKE ON TOMORROW. At the same time, it insisted that the marks were not confusingly similar, that its own applications had been conditionally accepted and that there was no impediment to their registration.

The court found these positions to be mutually destructive. If Tracker's registrations presented no obstacle to Altron, it was difficult to see how their presence on the register gave Altron the substantial interest needed to seek their removal. If they genuinely threatened Altron's commercial interests, its insistence that the marks were not similar required explanation. The court held that a merely precautionary interest was insufficient, and that Altron had not established standing.

The court did not stop there. Although Tracker's non-use since 2016 was common cause, Tracker showed substantial historical investment in its TAKING BACK TOMORROW mark, including advertising expenditure of more than R145 million. The court found that this had created a substantial residual reputation. Weighing that reputation against Altron's conduct, including its own denial that the marks were similar, the court held that it would have exercised its discretion against removal even if Altron had established standing. The application was dismissed with costs, including the costs of two counsel.

Altron's inconsistency therefore cost it twice: it defeated Altron's standing, and it counted against Altron when the court considered its discretion.

Universal and Altron were separated by decades, jurisdictions and the nature of their claims. But both illustrate the same danger: an argument advanced to strengthen a legal position may instead expose its weakness.

What This Means in Practice

Neither case means that a party must run exactly the same argument in every proceeding. Alternative arguments are permissible, and the circumstances of a dispute may justify different positions. The difficulty arises when those positions cannot be reconciled with the facts, the relief sought or what has been argued before. For anyone enforcing or challenging a trade mark, the two cases suggest four practical steps:

• Check your history before you act. Positions taken on a trade mark are rarely private. Before sending a demand or filing an application, review what has already been said about the mark in earlier litigation, oppositions, responses to the Registrar and correspondence. A position that was convenient in one dispute may prove damaging in another.
• Make sure your arguments can be reconciled. Advancing different arguments, including in the alternative, is permissible. Difficulties arise where one argument depends on a premise that another denies. Where different positions are necessary, explain how they coexist and support the distinction with evidence.
• Base standing on a genuine commercial interest. A party seeking the removal of a registration must show how its presence on the register actually affects the party’s existing or intended trade. A precautionary interest, or a general wish to clear the register, will not be enough.
• Think beyond the immediate dispute. An argument made in one forum may resurface in a later opposition, expungement application or infringement action, as may statements made in negotiations. Before taking a position, consider whether it fits the broader trade mark strategy, not only the case at hand.

Conclusion

Universal walked into court claiming exclusive rights to one of the most famous characters in film history and walked out facing an award of approximately $1.8 million. Nintendo emerged with its rights vindicated and a debt of gratitude to the lawyer who had defended them.

Nintendo did not forget the lawyer who had won its case. It first thanked John Kirby with a sailboat christened Donkey Kong, together with, fittingly for a trade mark dispute, the exclusive worldwide right to use that name on sailboats.

The greater reward came a few years later. In 1992, Nintendo released a Game Boy game starring a small, round, pink hero who would become one of its best-loved characters. When the time came to name him, Shigeru Miyamoto (the Nintendo designer who created Donkey Kong and Mario) has said, the lawyer who had beaten King Kong was part of the reason for the choice. Nintendo named its new hero Kirby.

KISCH IP asissts Businesses in developing, proecting and enforcing trade mark portfolios through commercially focused intellectual property strategies.