In this very recent case the claimant made a claim against the defendant inter alia for trade mark infringement, the defendant in response, counter claimed for invalidity of the claimantÂs trade marks.
The claimant: Casino de Monte-Carlo
The owner of Casino de Monte Carlo, has a state monopoly in casino gaming in Monaco, the claimant owns two registered word marks for ÂMonte CarloÂ and ÂCasino de Monte CarloÂÂ thatÂ are registered in respect of casinos and related services.
The defendant: Monte Carlo Casino Entertainment
Trades in Âfun casino entertainmentÂ with the trading name ÂMonte Carlo Casino EntertainmentÂ, it provides casino and other games to entertain guests at weddings and large events, although guests may compete for prizes, no gambling takes place.
Whether the defendantÂs domain and trading names infringed the claimants registered trade mark? in particular whether the defendants use ofÂ its mark led to consumer confusion resulting in a likelihood of association between the parties.
Whether the claimantÂs registration of the trade marks was invalid (under the Âabsolute grounds for refusalÂ inÂ line with EU and UK Trade Mark legislation) due to the use of the geographical term ÂMonte CarloÂ and the descriptive word ÂCasinoÂ?
The claim for infringement i.e. a likelihood of confusion between the trading names was dismissed for the following reasons:
- The defendant had enhanced the distinctiveness of the gambling services it provided.
- The average consumers of the defendant were likely to pay a higher degree of attention to the services provided, due to the fact that the services were purchased for a one-off event.
- The defendants services would have a higher degree of importance to a purchaser as they would book the services primarily for the purpose of enhancing an event.
- It was clear that a purchaser would not book the defendants services without direct interaction first.
The counterclaim for invalidity was dismissed because:
- It was held to be insufficient that ÂMonte CarloÂ was a geographical name and therefore invalid under the Âabsolute grounds for refusalÂ as to fall within the exclusion, a geographical name needs to be one that is associated with the particular goods or services within the specification of the mark.
- There was no evidence that suggested that the public would view the mark as indicting the geographical origin of the services.
- With regards to the use of the word ÂCasinoÂ being descriptive, this was held not to be the case as the claimants services related to casino gaming and related services.