Gambling and Trademark Law: Will the cancellation of the trademark “LOTTO” be followed by that of “TOTO”?

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

Arendts Rechtsanwälte
Perlacher Str. 68
D - 82031 Grünwald (bei München)
The State gambling providers are not just trying to protect their monopoly position by bringing competition proceedings against foreign and German gambling providers (in particular, commercial gambling agents) but they are also trademarking common terms such as “Lotto” and “Toto”. In this way, the state providers, in the form of the cartel, the Deutscher Lotto- und Toto-Block, sought (and continue to seek) to prohibit the use of all combinations with these generic terms (e.g., “freelotto”).

The cartel suffered a setback regarding the trademark “LOTTO”. The Federal Patent Court has withdrawn the trademark protection of “LOTTO” for gambling (an appeal is pending before the Federal Court of Justice). The Deutscher Lotto- und Toto-Block only remained successful with regard to other trademark classifications, such as the cashless transaction of payments. A labelling as Lotto-Chipkarte (Lotto-Chip card) was determined to be unique and signalised – according to the Federal Patent Court – black humour.

Following the LOTTO Decision, several European bookmakers have applied for the cancellation of the trademark protection of “TOTO” which is also held by the members of Deutscher Lotto- und Toto-Block. In the cancellation proceedings, it is submitted that “Toto” is merely an abbreviation of “Totalisator” (totaliser). On this basis, this generic term should not be protected by trademark and thereby monopolised by the state providers.