Bet365 wins trade mark ruling before EU court

The EU's Intellectual Property Office (EUIPO) made errors in law when it determined that Bet365's name did not qualify for trade mark protection, the EU's General Court has ruled.

The gambling operator has argued that its name has acquired distinctiveness in the way it has been used and is therefore eligible for registration as a trade mark, under EU trade mark laws. 

However, in March 2016, following a long legal battle regarding registration of the mark, the Fifth Board of Appeal of the EUIPO said that although Bet365 had convinced it of its "commercial success", the company had failed to provide evidence of consumer awareness of its brand for the various types of services for which it was claiming protection. It therefore deemed the Bet365 mark as invalid. 

However, the General Court took issue with the way the Board of Appeal assessed the evidence Bet365 had submitted and decided to annul the earlier decision. 

In its ruling, the General Court said that the Board of Appeal's decision was "not sufficiently substantiated by valid grounds" in respect of a specific range of betting and gambling services under Class 41 of the Nice Classification. However, Bet365's claims concerning its eligibility for trade mark protection in other classes of services was dismissed by the court. 

The Nice Classification is an internationally accepted system used to divide goods and services into different classes. Prospective trade mark owners are required to specify which particular goods or services their marks are to cover when seeking registration of those marks. 

The General Court said that the Board of Appeal had failed to consider evidence regarding the use of the Bet365 mark as part of a wider composition of marks when assessing the acquisition of distinctive character through use of that mark. 

The Court also said the Board of Appeal was wrong to ignore evidence concerning the perception of the public from use of the Bet365 name in a website address that the company operates. 

"In that regard, account should be taken of the fact that, first, only [Bet365] uses the element ‘bet365’ for the marketing of gambling and betting services, secondly … that element is found in all the marks it uses to identify its services in a general manner, thirdly, its website is its main gambling and betting sales channel, fourthly, in that sector, most of the marks used by online operators are, like the contested mark, inherently descriptive and, fifthly, it is well known that betters and players are, in the very great majority of cases, regular customers," the General Court said. 

"Accordingly, it is reasonable to consider that, except with regard to certain new players or betters for whom the experience is new, a customer who connects to [Bet365's] website at ‘www.bet365.com’ does not do so by chance and uses the contested mark or its derived marks to identify services offered by [Bet365], as opposed to services offered by its competitors, in the same way as a customer returning to a shop whose sign corresponds to the mark of the goods and services that he is looking for, which are sold there," it said. 

The General Court said that information concerning the number of connections to Bet365's website, the website's ranking in terms of visitor numbers from various countries, as well as data on the number of times consumers had searched from the name on internet search engines, "can help to show that the contested mark has acquired distinctive character through use". 

The General Court said that the Board of Appeal had made a further error in relation to how it had assessed press coverage of Bet365 and its directors. The Board of Appeal was wrong, it said, to determine that the press coverage "could not, at least with regard to some of them, illustrate use of the contested mark as a mark". 

The Board of Appeal "also erred in its legal characterisation of the facts" in the case by excluding data on Bet365's turnovers, stake figures and advertising investment as relevant to the assessment of whether the company's name had acquired distinctive character through use.