Trade Mark „Lotto“ cancelled for good. When is „TOTO“ going to follow?

Rechtsanwalt Martin Arendts, M.B.L.-HSG

Arendts Rechtsanwälte
Perlacher Str. 68
D - 82031 Grünwald (bei München)
As we had already mentioned, the Federal Patent Court has approved the cancellation of the trade mark „LOTTO“ for games of chance. The „Deutsche Lotto- und Toto-Block“, the cartel of state providers had now filed complaint with the Federal Court of Justice (BGH). The Federal Court of Justice – as last instance court – recently approved its cancellation (decision of the 19th of January 2006, case-no. 1 ZB 11/04). „LOTTO“ had to be regarded as a descriptive indication of an object. It could not be regarded as a reference to its operational origin. Regarding the designation of a product such as „LOTTO“ this could only be the case, if the predominant part of commerce regarded it as a reference to a particular operator. A state monopoly such as it exists in Germany did not change its meaning into a reference of origin.

The same criteria apply to the trade mark „TOTO“ held by the „Deutsche Lotto- und Toto-Block“ as well, which is only a matter of describing an object, in the case, the abbreviation of Totalisator. Pleading this mark, a state lottery operator tried to have the use of „TOTO“ prohibited and claimed damages. Thereupon ARENDTS ANWÄLTE filed for cancellation of the mark. The German Patent and Marks Office will decide upon this claim within the next few weeks. It can be assumed that the mark „TOTO“, in accordance with the Federal Court of Justices‘ decision will be cancelled as well.