Can the term BET 365 can be protected as a EU trade mark? This question has been ongoing for over a decade. The background is:-
- Initially, the trade mark (which was filed for a wide range of products and services by the bet365 Group Ltd - the “Group”) was refused protection due to the fact that to the average English-speaking consumer, the term BET 365 was descriptive of the goods and services concerned, in so far as ‘bet’ referred to betting and the element ‘365’ referred to the number of days in a year, meaning that the mark referred to the availability of all-year-round betting.
- The EU trade mark application was however later accepted for registration. Shortly afterwards a German individual (Robert Hansen) challenged it for invalidity. That action was filed on the basis that, once again, the term BET 365 was not capable of being protected as a trade mark because it described the fact that the services would be offered all year round. Mr Hansen filed his action after the Group objected to, and successfully blocked, his own attempt to secure protection for b365.
- Evidence that the mark had acquired a distinctive character through use was submitted which included a statement by the Group’s Chief Executive and a senior member of the Remote Gambling Association. Those statements together with the evidence showed that the Group had considerable market share and geographical scope of use (in a number of EU countries) for the BET 365 trade mark. They had also made significant investment and promotional activities in the name. That meant that the industry, and also the consumers, would recognise the term BET 365 as belonging to the owner. This was especially true for betting and gambling services but, by extension, may have also been true for some of the other goods and services applied for.
- Mr Hansen’s main argument was the fact that the Group was mainly active in Ireland and the UK and that the element ‘bet365’ was used by the Group only as a company name and a domain name to attract internet users to its website but not as a means of identifying the actual services being offered to customers (with the exception of the game ‘bet365 bingo’). He alleged therefore that they had not met the threshold for acquiring distinctiveness. The BOA agreed that the mark BET 365 was descriptive, despite the persuasive evidence that had been submitted. The BOA pointed out that the turnover and advertising figures (and other evidence supplied) were not apportioned among all the goods and services for which the contested mark had been registered and that, as a result, it was impossible to know what the consumer’s perspective of the mark was for those various goods and services. A breakdown of the products and services offered and the amount of advertising expenditure or promotional activities for each might have helped here,
- An appeal was filed to the EU General Court (“GC”). The main issue was whether the mark BET 365 had acquired distinctive character through use.
The GC handed down its judgement on 15 December 2017. It was decided that the earlier decision contained a number of errors in law, when it found that the term BET 365 could not qualify for trade mark protection. Insufficient attention had been given to the evidence and the specific uses made, especially the evidence that showed how the public would perceive the use of BET 365 in the domain name. Consumers do not happen to stumble on a website by chance. Instead, they seek it out by reference to that name. They are looking to place a bet (or gamble) and know a company that offers those services. In many ways this is the same way as a customer returning to a shop whose sign corresponds to the mark of the goods/services that he is looking for, and which are sold there. The website analytics together with the press releases, market share and financial figures were, when correctly taken into account, quite convincing.
It was held that the Group had acquired distinctiveness in the term BET 365 for their main activities, namely betting and gambling services (and other gambling activities in class 41). As mentioned previously, the specification covered a broad range of goods and services. For the rest of the products and services applied for, the Group could not show acquired distinctiveness. The term could only be registered for those core activities. Whilst, legally speaking, this is only a partial success, this gave the Group protection for their main business.
Take away messages
This case illustrates a number of points. Had the bet365 Group not challenged an application for b365 (and decided to let it pass through to registration), their registration may not have been challenged post registration, meaning they could have had broader protection that they ended up with.
The decision is also a reminder that, on occasion, investing in an appeal to the Courts can have its benefits. This is especially true when a core house mark is in dispute.
Case Ref T-304/16