Following a long-running legal battle, the General Court of the European Union (‘General Court’) found that the mark ‘BET 365’ has acquired distinctive character through use, at least in relation to betting and gambling services in class 41.
Bet365 Group filed an application for ‘BET365’ in May 2007. The examiner objected to this application on the basis that, in his view, the mark is descriptive of the goods and services applied for as ‘Bet’ referred to betting and ‘365’ referred to the availability of all year round betting.
A year later, having submitted evidence that ‘BET365’ had acquired distinctive character, the application was accepted.
In 2013 Bet365 Group opposed an application for ‘b365’ on the basis of its earlier registration. The owner of the ‘b365’ application then applied to invalidate the registration for ‘BET365’ on the basis that it was descriptive of the goods and services covered and that it was not distinctive.
The cancellation division found in favour of Bet365 Group and rejected the request for a declaration of invalidity, finding that BET365 had acquired distinctive character. This decision was appealed to the Board of Appeal (‘BOA’) who ruled that the mark ‘BET365’ was descriptive and ‘intrinsically not distinctive’.
Bet365 Group appealed the decision of the BOA to the General Court.
The General Court partially annulled the decision of the BOA (in so far as it relates to class 41 services) said found the Board of Appeal had failed to pay a sufficient degree of attention to a considerable amount of the evidence filed by Bet365 Group. This evidence helped show that the mark ‘BET365’ has acquired distinctive character through use.
In particular, this evidence related to use of BET365.com and associated web analytics, evidence relating to use of ‘BET365’ in advertisements (rather than use as a company name), market share and financial figures. When this evidence was taken into account, the argument that the mark had acquired distinctive character in relation to class 41 services was convincing. For the remaining goods and services covered by ‘BET365’, BET365 Group could not show that the mark had acquired distinctiveness through use.
This case illustrates the type of evidence that is taken into account when trying to establish that a mark has acquired distinctive character through use and is a helpful reminder on what type of evidence is most pertinent.