Bet365 partially backed in EU General Court
The EU General Court has partly backed British online gambling company Bet365 in its battle to trademark its name in the EU.
In a decision handed down this morning, the court annulled the part of a ruling which stated that the mark ‘Bet 365’ was descriptive and had not acquired distinctive character in class 41, covering betting services.
The dispute dates back to 2007, when Bet365 filed an application with the European Union Intellectual Property Office (EUIPO) for ‘Bet 365’ in classes 9, 28, 35, 38, 41 and 42 for its online betting service.
The examiner informed Bet365 that he intended to reject the application on the ground that the mark applied for was descriptive of the goods and services concerned, insofar as ‘Bet’ referred to betting and the element ‘365’ referred to the number of days in a year.
This was challenged by Bet365, which claimed the mark had acquired distinctive character prior to the application.
The company had submitted a variety of evidence to prove distinctiveness including press cuttings and statements from industry leaders.
In September 2008, the examiner acknowledged that the evidence submitted by the applicant showed that the mark had acquired distinctive character through use.
The application was published for opposition in October 2008 and was registered in 2012 after an opposition from Robert Hansen was rejected.
In June 2013, Hansen then filed a request for invalidity of the ‘Bet 365’ mark. His application for the trademark ‘b365’ had been successfully opposed in February 2013 by Bet365.
He claimed that ‘Bet 365’ was descriptive of the goods and services covered and that it was not distinctive.
In November 2014, this action was rejected by the Cancellation Division, which ruled that the mark had acquired distinctive character based on evidence submitted by Bet365.
However, upon appeal by Hansen, the Fifth Board of Appeal at the EUIPO ruled that the mark was descriptive and “intrinsically not distinctive”. The ruling added that the mark had not acquired distinctiveness in all European countries.
“The Board of Appeal expressed doubt that the applicant’s success proved that the contested mark had acquired distinctive character through use,” the ruling said.
This led to an appeal by Bet365 to the General Court, which annulled the Fifth Board of Appeal’s decision insofar as it concerns the services in class 41, but dismissed the remainder of the action from Bet365.
Class 41 is titled “Provision of betting, gambling and gaming services through physical and electronic sites and telephonic centres”.
The General Court said the Fifth Board of Appeal had not sufficiently substantiated its decision concerning the gambling and betting services in class 41.
“Consequently, with regard to those services, the single plea in law seeking annulment is well founded and there is no need to examine the last arguments put forward by the applicant concerning the lack of opinion polls or evidence from a chamber of commerce in respect of which it was criticised by the Board of Appeal.”
However, the remainder of the appeal, which covered classes including computer software, games and financial services, was dismissed.