French court delivers split verdict in trademark case

A ruling was handed down by the Paris Court of First Instance in a trademark infringement case this week between French former state-regulated monopoly, Pari Mutuel Urbain (PMU) and online gambling operator, Unibet and the jurisdiction of Antigua.
The case was based on several trademarks registered by the PMU prior to the liberalisation of the French market that identified betting services as “Simple”, “Couplé”, “Trio”, “Tiercé”, “Quarté+”, “Quinté+”, “2sur4″ and “Multi”.
On Unibet’s entry into the now liberalised market, the firm used the same terms to identify the betting services. PMU brought a claim of trademark infringement, unfair competition and parasitism against Unibet and Antigua.
In a counter-claim, the defendants requested that PMU’s trademarks be cancelled on the grounds of:
– The trademarks were registered in bad faith as they were registered in a context of the liberalisation of the online betting market to prevent new entrants from using the names of the horse bets. Defendants emphasised that PMU did not create the bets, nor did it create the names of the bets, and that it could not ignore their use by Unibet or by any other operator before the filing.
– The trademarks were devoid of any distinctive character since they:
– Consisted of the necessary, customary and generic terms to designate horse betting.
– Designated a particular type of horse betting decreed by the French government and are registered for goods and services related to horse betting.
– Denoted an essential characteristic of the bookmaking activity (ie, the type of horse betting).
In a split verdict, the court rejected PMU’s trademark infringement claim and ruled in favour of the online bookmakers.
However, the court found that Unibet and Antigua were liable for parasitism in their use of the same colour code used by PMU, and ordered that the defendants pay the sum of Euro 50 000 in damages to PMU and are prohibited from using the colours in future, reports law firm Baker & McKenzie.
In response to media reports on the ruling, PMU issued a press release stating that it will appeal the ruling and pointed out that the ruling is suspensive in nature.

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