All bets are off: EUIPO Cancellation Division holds that Lottoland’s Powerball EUTM was filed in bad faith.

As a consumer of online media, you will probably have come across one of Lottoland’s lottery betting advertisements. Lottoland is headquartered in Gibraltar and entices customers in Ireland and the UK (and other jurisdictions) to place bets on the results of a number of different lotteries, including the popular US-based Powerball. Powerball is one of the most famous lotteries in the world and its 2016 jackpot of $1.5 billion USD was the largest draw in history. It is important to mention from the outset that Lottoland is not officially connected to the Powerball lottery or any other lotteries.

On 30 April 2021, the owner of the Powerball lottery in the US, Multi-State Lottery Association, filed an invalidity action against European Lotto and Betting Limited’s (“Lottoland”) EUTM Registration No. 12851556 ‘Powerball’ (word mark) which was protected for entertainment and advertising services, among others.

During the invalidity proceedings, Multi-State Lottery Association argued that Lottoland intentionally blurred the distinction between various genuine lotteries (including Powerball) and its lottery betting services so that customers would be confused and misled into believing they were playing the actual legitimate lottery. It argued that Lottoland’s conduct in registering Powerball as an EUTM amounted to dishonest conduct and was an illegal attempt to misappropriate Multi-State Lottery Association’s IP rights. Evidence was introduced showing that Lottoland had applied to register a number of other trade marks belonging to other lotteries such as EuroMillions and “EuroJackpot”. Multi-State Lottery Association argued that the combination of these activities was sufficient to establish that Lottoland’s Powerball EUTM was filed in bad faith.

Lottoland counter-argued that the EUIPO had previously held that the Powerball trade mark did not have a reputation in the EU and that Multi-State Lottery Association had no rights to the Powerball trade mark there and that was why its Powerball trade marks had been successfully revoked. Lottoland further argued that Multi-State Lottery’s invalidity action was an illegitimate attempt to undermine fair competition.

On 2 August 2022, the Cancellation Division held that even though Powerball is not known in the EU, this is not a mandatory requirement under the bad faith provisions. It also stated that even if US lotteries such as Powerball aren’t able to operate in the EU, they may decide to licence their trade mark and it can’t be assumed that just because they don’t operate within the EU that they’re not entitled to own a trade mark and use it or assign it to another party.

The Cancellation Division went on to say that once Lottoland obtained registration of the Powerball EUTM, it tried to monopolise the use of Powerball within the EU “not only against the original owner of the mark but also against other European competitors” and that by preventing other parties from using Powerball, its aim was not to engage in fair competition but rather was to prevent its competitors from referring to Powerball and this went against the established principle of good faith. It also held that Lottoland had a pattern of applying to register trade marks of other lotteries and this also pointed to bad faith. As such, the Cancellation Division held that the trade mark should be cancelled for all of the services it was registered for.

A copy of the full decision (Cancellation No. C 49 690) can be downloaded by clicking here

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