Sportsbet takes punt on descriptive mark

In brief 5 min read

The decision in Sportsbet Pty Ltd [2019] ATMO 86 regarding the inherent capacity to distinguish of the mark SAME GAME MULTI provides a timely reminder of the perils of adopting descriptive trade marks.

Key takeaways

• Whilst it may be superficially seductive for traders to want to adopt marks which describe their goods or services (or a characteristic of them) and thus avoid the need to educate consumers as to their nature or qualities, the adoption of such marks carries obvious risks if the traders want to secure a monopoly in the mark.
• As experienced by Sportsbet, it can be extremely difficult to demonstrate that the trade mark can serve as a badge of origin, even if there has been substantial use of the mark.
• Furthermore, and perhaps most importantly, even if a trader is able to secure registration of the mark consisting of, or containing descriptive words, it will be extremely difficult to enforce those rights against a third party making good faith use of the word/s to describe their own similar goods or services.

Gambling on descriptive wording

Sportsbet, which offers online, mobile app and telephone betting services to Australian customers, applied for registration of the trade mark SAME GAME MULTI covering goods and services in classes 9 and 14, including computer software for betting and gambling services and betting and gambling services. The trade mark was designed to be used in respect of a new bet type which enables the bettor to combine a series of single bets into one bet (a multi) within one specified game, with the odds multiplying with each additional bet.

During examination, the application was rejected on the basis that the mark was not inherently adapted to distinguish the claimed goods and services, with the Examiner referring to third-party generic use of the phrase. After an unsuccessful attempt to overcome the objection through argument, Sportsbet took the matter to a hearing.

At the hearing, Sportsbet argued it coined the phrase SAME GAME MULTI for use in relation to its new betting product, providing evidence of market research relating to 14 potential names, including SINGLE MATCH MULTI, ONE GAME MULTI and MATCH MULTI, and evidence that the SAME GAME MULTI mark was selected as the preferred option in July 2016. Sportsbet also provided evidence that the examples of third-party use of the phrase relied upon by the Examiner were, in fact, uses by Sportsbet, or related entities. Sportsbet therefore argued that, as it had coined the phrase SAME GAME MULTI and the phrase was not in common use as at the filing date of the application, the mark is inherently adapted to distinguish the claimed goods and services. It also argued the mark is syntactically unusual (ie that it ends in MULTI), and incomplete (given that MULTIBET) would accurately describe the characteristics of the goods/ services.

Finally, Sportsbet argued that even if the mark was not deemed inherently capable of distinguishing the claimed goods and services, the use made of the mark by Sportsbet prior to the filing date of the application was sufficient to demonstrate the mark had acquired distinctiveness so as to justify acceptance.

The decision: Sportsbet's argument goes bust

Unfortunately for Sportsbet, however, Hearing Officer Aaron Walters was not persuaded.

In Australia, the test for distinctiveness was outlined in the 1964 case of Clark Equipment Co v Registrar of Trade Marks, in which Kitto J explained that a mark's inherent adaptation to distinguish is:

the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

Considering the test in the context of the present case, the Examiner made the following salient observations:

• The 'ordinary signification' of the phrase SAME GAME MULTI was to be considered in the context of the relevant audience. In this case, the relevant audience included not only consumers of the goods/services, but also rival traders. In that context, the use of the word MULTI (without the word BET) had a recognised meaning and was in common use.
• A mark made up of descriptive words can be inherently capable of distinguishing goods and services provided there is a perceptible difference between the coined phrase 'as a badge of origin' and the ordinary meaning conveyed by the sum of its parts. Whilst the Hearing Officer accepted that the phrase SAME GAME MULTI was coined by Sportsbet, it did not consider that, when used in relation to goods or services for the purpose of facilitating a bet or wager, there was a perceptible difference in what is otherwise an inherently descriptive meaning conveyed by the combination of the words.
• Both the market research conducted by Sportsbet and Sportsbet's own marketing materials served to highlight the descriptive nature of the phrase. Sportsbet's internal marketing research included the observation '…the name needs to resonate with customers and basically "does exactly what it says on the tin"'. Furthermore, when Sportsbet announced this new product offering via blog in July 2016, the post read:

What is a SAME GAME MULTI?

Exactly what is sounds like. SAME GAME MULTIs let you place a multibet using a combination of legs from the same AFL match on your mobile.

• The use made of the mark by Sportsbet prior to the filing of the application was insufficient to demonstrate the trade mark SAME GAME MULTI had acquired distinctiveness as at the filing date. In reaching this conclusion, the Hearing Officer considered the use in the overall context of the descriptiveness of the phrase and the substantial promotion of, and reputation in, the SPORTSBET trade mark. Noting that much of the evidence of use of the SAME GAME MULTI mark was in combination with, or in close proximity to, the SPORTSBET trade mark, the Hearing Officer did not consider that the evidence demonstrated the SAME GAME MULTI mark was operating as a trade mark in its own right.