Ratpack inspires an unexpected trade mark triumph

Irish trade mark cases continue to fascinate the connoisseur, since there is nowhere quite like the Emerald Isle for those curious encounters where grit meets glamour (as where the men from Monte Carlo take on a fish and chip shop from County Monaghan, here) and where a couple of Marie Claires can get their claws out and have a real cat-fight, as happened here.  Well, here's another one for the collection: it's  Collegewood Street Ltd's application; opposition of TBH Ltd, a 23 September decision from the Irish Trade Marks Registry (Dermot Doyle, acting for the Controller) which only recently came to this Kat's attention. You can download it from the Irish Patents Office website here.

Still providing inspiration ...

In October 2009 Collegewood applied to register the word BETPACK as an Irish trade mark for gambling and betting services, both online and off it, in Class 41. TBH opposed in February 2010, being the owner of an earlier Community trade mark for the word BETDAQ, registered for various gambling, gaming and betting goods and services in Classes 9, 36 and 41. Initially the opposition was based on a whole host of grounds, starting with the Trade Marks Act 1996, section 8 on the grounds that BETPACK (i) did not fall within the definition of a trade mark, (ii) was devoid of distinctive character, (iii) consisted exclusively of signs or indications which may designate characteristics of the goods, (iv) was of such a nature as to deceive, (v) was such that its use would be prohibited by enactment or rule of law. Then there was section 10, objecting that BETPACK (vi) was likely to be confused or associated with BETDAQ and (vii) was such that its use would take unfair advantage of, or be detrimental to,BETDAQ's distinctive character or reputation.

As if this wasn't enough, TBH further claimed that BETPACK for would obstruct or prejudice the legitimate conduct of its business and should be refused as being contrary to the provisions of the Trade Marks Act 1996, in accordance with the judgement and/or discretion of the Controller, and that the mark applied for was contrary to Council Directive 89/104 to approximate the laws of the Member States relating to trade marks. The vast array of grounds, some of which look decidedly diaphanous, all rather reminds this Kat of the proceedings before the same  good soul earlier this year in T.M.R. Restaurants Ltd's application; opposition by Société Anonyme Des Bains De Mer Et Du Cercle Des Etrangers (here), in which Dermot Doyle, to the great and continued approval of this weblog, excoriated the approach of slinging the kitchen sink at trade mark applicants by raising a plethora of grounds which almost all have no substance whatsoever.

TBH submitted evidence of use of the BETDAQ trade mark in Ireland, including details of its not inconsiderable advertising and marketing expenditure. Collegewood offered evidence that the word BETPACK was devised in 2009 by a number of local independent bookmakers, who between them owned some 180 betting shops in Ireland and who joined forces to create an online gambling platform, their intention being to increase online competition and to create a level playing field for independent traders to compete with the big international bookmaking firms: the theme of the brand BETPACK was said to be based upon the group of actors in the mid-1960s nicknamed “The Rat Pack”, whose most prominent members were Frank Sinatra, Sammy Davis Jr and Dean Martin.

Filing a written submission in lieu of attending at a hearing, TBH neither particularised nor furnished any evidence in support of its opposition under Section 8, limiting its case to an assertion that

“The adoption of another party’s Trade Mark and substituting some of the last letters with different letters with a similar pronunciation, is not the invention of a new word created by the Applicants to distinguish their services from those of other traders. There is a likelihood of confusion between the Marks BETPACK and BETDAQ and the registration of a confusingly similar mark is contrary to the provisions of Community Law prohibiting the registration of the Trade Mark in the State, particularly Council Regulations regarding the registration of trade marks.”

No evidence or argument was offered in support of the grounds of opposition mentioned in its Notice of Opposition, other than those relating to Section 10(2) of the Trade Marks Act 1996, which addressed likelihood of confusion.

Dermot Doyle dismissed the opposition.  This is what he held:

* TBH's arguments on Section 8 were misguided, since that provision was concerned with absolute grounds for refusal of an application, which must be considered in isolation from any other mark. The opposition in respect of those grounds of opposition would accordingly be dismissed.

* The services for which BETPACK was to be registered were identical or similar to those for which the earlier mark BETDAQ was already registered.

*  Overall, the marks had a medium level of visual similarity, a medium-high level of aural similarity and a medium level of conceptual similarity.

* Since betting is a regulated activity in Ireland and users of both Collegewood's and TBH's services must be aged 18 or over, the betting public must be taken to be legally mature, to make adult decisions and to understand the activity in which its members are engaged.

* The parties did their business in different ways.  TBH did not have betting shops on the high-street, but operated a betting exchange that was exclusively online-based.  This was important because there was a fundamental difference between the business of a betting exchange and that of a traditional bookmaker. When a punter places a bet with a bookmaker, he gets the odds that the bookmakers is willing to lay on the particular horse, team or individual. The bookmaker then calculates the odds based on the market and will win or lose depending on the volume of money staked and what he pays out on the winner of the event. Casual and occasional punters (those that may place a bet at weekends or once a year on the Grand National) use the services of their local bookie. Typically, they do not go online, open an account and provide personal details including credit or debit card information. In contrast, operators of betting exchanges do not offer odds. They bring together one punter who wants to back a particular horse, team or individual and another punter who is prepared to wager that that particular horse, team or individual will not win. The “layer” sets the odds he is prepared to lay. Betting exchanges make their money by taking a commission from whichever party wins the bet. Users of betting exchanges are therefore punters with significant market knowledge and expertise.

* In order to use TBH's service for the first time, a punter must enter the site by typing www.betdaq.com, set up an account and secure it by a username and password of the punter’s choosing. The prospective punter is required to provide sensitive personal information, including financial details. Having established an account, no punter would mistakenly enter Collegewood's site by typing www.betpack.com when he intends to type www.betdaq.com in order to return to the BETDAQ site. There would not be any question of TBH losing custom because the punter placed a bet with BETPACK when it intended to place a bet with BETDAQ.

* There were many betting exchanges in operation, and it was very common for these to have a name commencing with the word BET -- for example BETDASH, BETDIRECT, BETFAIR, BETFRED, BETCLIC, BETEX and BET365. Consumers were very familiar with this phenomenon and could readily differentiate between the respective services by virtue of the different suffixes of the marks. The addition of BETPACK to the family would not result in any confusion with TBH's mark.

* The evidence of confusion offered byTBH in support of its claim that confusion has already arisen did not support an opposition based on confusion on the part of a consumer in the course of trade, since it related to an invoice mistakenly sent by a supplier of services who sent it to Collegewood instead of TBH. It was a mere administrative error. No evidence had been advanced to suggest that any confusion had arisen between consumers of TBH's business and that of Collegewood, based on the similarity between their respective marks.

This Kat has an uncomfortable feeling about this decision.  While the parties' respective trading activities happen to be quite different right now, business models change from time to time as opportunities, leisure activities and technological convergence evolve. Trade marks however are potentially eternal and the specifications of TBH's mark and Collegewood's marks enjoy (if that be the word) a larger degree of actual or potential overlap than this decision suggests.  When a court has to deal with passing off, the "here-and-now" aspect of what businesses are actually doing is the fulcrum around which both legal arguments and the submission of evidence turn -- but trade mark law, at least in the version we have in Europe, looks beyond that, at the penumbra of

Let's look a little closer at the services specified by the respective parties. For BETPACK,

"Gambling and betting services; bookmaking services; gaming services, amusement and entertainment services; entertainment; organisation and conducting competitions; providing of casino facilities; providing casino services; services for the operation of computerised bingo; on-line bingo; organising competitions; provision of the aforesaid services on-line from a computer database or the internet; provision of information relating to gaming services accessible via a global computer network; provision of information on-line from a computer database or from the internet in relation to gaming, amusement and entertainment services" 

and for BETDAQ

"Gambling, wagering and gaming services; on-line and telephone gambling, wagering and gaming services; entertainment and sporting services provided on-line from a computer database or the Internet; sports book makers; lottery services". 

Against this overlap, is it right that the mere fact that BETPACK is currently used for conventional betting while BETDAQ is used in respect of betting exchange services should allow both marks on to the register while, with the identical specifications, if both had been aimed at conventional betting or at betting exchange, the opposition would have succeeded?

The Ratpack here
You better you bet, here (recommended nostalgia for anyone who was around in 1981)