Trade mark "TOTO" of the state lottery companies deleted!

The Federal Patent Court (Bundespatentgericht) had to decide in the context of a cancellation application whether any obstacles to registration existed for the trade mark "TOTO" and whether it should therefore be deleted.

Some of the 16 state regional lottery companies initiated proceedings against foreign bookmakers because the bookmakers commercially used the word mark "TOTO" registered for the lottery companies in various forms for their sports betting offer. With this, the lottery companies intended to shield the German sports betting market against foreign providers.

The bookmakers subsequently applied for cancellation of the mark on the grounds that "TOTO" is a purely descriptive term for football betting, which should not be monopolised for a mark proprietor.

The lottery companies argued in contrast that the sign was a fanciful term, which had also already achieved acceptance in trade. Therefore, the sign was correctly registered.

Decision of the court

By means ofOrder of 08.04.2013 – Case number 33 W (pat) 35/10 – the Federal Patent Court (Bundespatentgericht) ordered the cancellation of the mark for all registered goods and services.

The trade mark "TOTO" was not capable of registration and is not capable of registration today. "TOTO" is a commonly used abbreviation of "Fußballtoto" and describes a characteristic of the claimed goods and services. Neither at the time of application nor at the time of registration did the sign establish itself among the relevant circles of trade, so that the mark must be deleted.

Conclusion

The DPMA had already expressed reservations regarding the capability of registration when the sign "TOTO" was registered, since the applied-for sign had a descriptive character and also lacked any distinctive character whatsoever. Ultimately, however, the mark was registered as a sign already established in trade.

This was certainly due to the monopoly of the lottery companies that existed at the time of application. The 16 state regional lottery companies united in a cartel now lose the protection of their mark following the decision of the Federal Patent Court (Bundespatentgericht), so that "TOTO" may also be used by third parties.