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X Sued by SUISA for Infringing Copyright, CJUE Rules on the 'bet365' Trademark – European Commission

17-Dec-2023 | Source : The European Commission | Visits : 645

BRUSSELS - SUISA Digital, a Swiss collecting society for musical works, filed a copyright infringement lawsuit against Twitter International, the parent company of X, in the District Court of Munich. In the lawsuit, SUISA accuses X of failing to obtain the necessary licenses from it to use the music shared by its users. The claim is based on the fact that the X platform allows users to share music without obtaining the required licenses, unlike platforms such as YouTube, which has strict rules on music use and a structured system for monitoring music rights to ensure that rightful owners receive compensation for their work, according to the official website of the European Commission.

SUISA is a Swiss collective management society which represents tens of thousands of songwriters, composers and publishers, with a repertoire of an estimated 10 million works. The lawsuit alleges that many posts on X include videos with music, including "a significant number" of works from SUISA's collection.

The rights to these songs, many of which were included in full-length videos on X, are managed by SUISA. SUISA Digital states that it has attempted to negotiate a license with X/Twitter to secure appropriate permissions, but that since X had refused to enter into talks on the matter, it had decided to take legal action.

Although SUISA Digital is officially based in Switzerland and Liechtenstein, it has decided to file the lawsuit in Munich, Germany. This strategic decision is in line with the organization's focus on a larger market with a strong tradition of copyright protection.

While the potential damages in the music publishers' lawsuit could reach up to €237 million based on statutory penalties, the German legal system dictates that actual damages will be determined based on the value of the licenses that Twitter failed to acquire. The underlying aim of this lawsuit appears to be to force X into licensing negotiations. Indeed, earlier this year SUISA reached an agreement for the licensing of its catalogue with Snapchat following a lawsuit filed by SUISA on the same basis.

On the other side, X's ongoing legal troubles extend beyond this particular copyright infringement claim. In June 2023, Spain's National Music Publishers Association filed a lawsuit against Twitter on behalf of 17 record labels representing the industry's most prominent artists. In the same month, a copyright infringement lawsuit was filed in the US by several music industry giants such as Sony Music Publishing. More recently, in August 2023, X was sued by Agence France-Presse (AFP) for refusing to pay for the use of AFP's photos and news content. 

CJEU Partially Annuls EUIPO’s Decision on the 'bet365' Trade mark

In a recent judgment of 6 December, T-764/22, the Court of Justice of the European Union (CJEU) partially annulled the decision of the European Union Intellectual Property Office (EUIPO) rejecting the application for registration of the trade mark "bet365".

The company bet365, a well-known online betting platform that has achieved a prominent position in the gambling sector, has offered sports betting, online casino and other gambling services in several jurisdictions since its establishment in the United Kingdom in 2000.

In May 2022, the company applied for registration of the European Union trade mark in relation to goods and services falling within Classes 9, 16, 28, 35, 36, 38, 41 and 42 of the Nice Classification. These include a wide range of goods and services such as betting software (class 9), games (class 28), printed matter and publications (class 16) and consultancy services, among others.

The EUIPO examiner refused the application on the grounds of lack of distinctiveness and descriptiveness under Article 7 of the EU Trade Mark Regulation. The applicant appealed to the EUIPO Board of Appeal, arguing that the mark "bet365" was an invented expression with no clear meaning in English in relation to the goods and services applied for. However, the Board of Appeal upheld the examiner's decision on the basis that the mark provided direct information about the goods and established a close relationship with them. It therefore considered the mark to be descriptive of the goods and services in question and rejected the appeal, although it remitted the case to the Examination Division to determine whether the mark had acquired distinctive character through use as claimed by the applicant under Article 7(3).

Bet365 brought the case to the CJEU. The Court addressed the first allegation, which argued that the Board of Appeal had failed to properly examine the trade mark in question and did not take sufficient account of the figurative elements, but the Court upheld the overall assessment made by the EUIPO, emphasizing the importance of analyzing both the denominative and figurative aspects.

Regarding the second complaint about the meaning of "bet365," the applicant claimed that the expression did not necessarily correlate with "betting every day of the year." In this instance, the Court also supported the position of the Board of Appeal, stating that the mark was correctly evaluated, and the relevant public could link the combination with the concept of daily betting, making the mark descriptive and therefore lacking the required distinctiveness to be registered.

On the third issue relating to the significance of the figurative elements, the applicant argued that the "bet365" mark had a distinctive tricolour (green, white and yellow) which defined its character. However, the EUIPO countered that the combination of colours was neither exceptional nor particularly striking, as it was perceived as an aesthetic element. Once again, the Court supported the EUIPO's decision, pointing out that the mark as a whole had been correctly assessed and that the applicant had failed to put forward any specific arguments challenging the Board of Appeal's assessment of the lack of distinctiveness of the figurative elements.

On the fourth argument concerning the descriptive relationship with the goods and services, the applicant accepted that the mark "bet365" could be considered descriptive, but argued that this was not the case for all the goods and services designated. The EUIPO maintained that there was a sufficiently direct and concrete relationship between the mark and the goods and services in the classes referred to, in particular those relating to betting and gaming.

The Court emphasized that, under Article 7(1)(c) of the EU Trade Mark Regulation, a sign must have a direct and concrete relationship with the goods or services to be considered descriptive and therefore not registrable as a trade mark, and that since the "bet365" mark conveys the idea of daily betting, it was descriptive of all goods and service directly linked with betting activities. It however annulled the contested decision for Classes 16 (printed matter and publications), 35 (advertising) and 42 (IT advisory and licensing services), holding that the mark 'bet365' was not descriptive of goods and services included in these classes.

Finally, it's important to note that bet365 had also filed a subsidiary claim arguing the regardless of the distinctiveness – or lack thereof – of its mark as such, it should be registered on the basis that the mark had acquired distinctiveness through its use, meaning that people now recognized the “bet365” name and logo as being theirs This subsidiary claim did not reach the CJEU and there remains a potential route to registration of the bet365 mark for all the goods and services specified in the application. This possibility depends on the ability to demonstrate that the mark has in fact acquired distinctive character despite the decisions of the Board of Appeal and the CJEU regarding the inherent descriptiveness of the mark. 


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