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6 December 2019TrademarksSarah Morgan

Bet365 secures partial win before EUIPO

UK-based gambling company Bet365 has secured a partial victory before the European Union Intellectual Property Office (EUIPO) in its bid to retain the trademark for its name across the EU.

On Monday, December 2, the EUIPO’s Fourth Board of Appeal concluded that the Bet365 trademark could cover betting and gambling services in class 41, but rejected its use on a series of other goods and services.

Back in May 2007, Bet365 applied to register ‘Bet365’ as an EU trademark, in classes 9, 28, 35, 36, 38, 41, and 42.

The trademark was registered in 2012 but, the following year, Germany-based individual Robert Hansen attempted to invalidate the mark.

In 2014, the EUIPO’s Cancellation Division rejected Hansen’s request for a declaration of invalidity in its entirety, finding that while the ‘Bet365’ mark is descriptive and consequently not distinctive, the trademark had acquired distinctive character through use.

However, Hansen appealed against the decision and, in March 2016, the EUIPO’s Fifth Board of Appeal upheld the appeal for all the goods and services.

According to the appeal board, ‘Bet365’ hadn’t acquired distinctiveness through use in a substantial part of the relevant territory, including the UK, Ireland and Denmark. It also found that Bet365 had demonstrated commercial success, but had failed to establish a link between that success or its advertising activities and the public’s perception of the mark.

This time, it was Bet365’s turn to appeal against the decision. The gambling company filed an action before the EU General Court and, in December 2017, the court partly backed Bet365.

The General 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. It also dismissed the action for the remaining goods and services.

Hansen appealed again but, in February 2018, the Court of Justice of the European Union dismissed the appeal. The following year, the parties were informed that the appeal had been reallocated to the Fourth Board of Appeal.

Earlier this week, the appeal board confirmed that Bet365 had acquired a distinctive character for betting and gaming in the EU member states.

The Fourth Board of Appeal added that even where evidence hadn’t been provided to show distinctive character in individual member states, the betting services relate to European sporting competitions (such as the Champions League) which attract an EU-wide interest and so might be expected to attract interest in the member states.

However, the appeal board also annulled the part of the 2014 decision which had rejected the cancellation of the ‘Bet365’ trademark in the other classes. After declaring the EU trademark invalid for these goods and services, the board ordered each party to bear its own costs.

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