PARI MUTUEL URBAIN GIE (PMU) VERSUS UNIBET INTERNATIONAL LTD (MALTA), UNIBET LONDON LTD (UNITED KINGDOM) AND GLOBAL ENTERTAINMENT ANTIGUA LTD (ANTIGUA)
Court of Appeal of Paris, 14 September 2012:
- Parties: Pari Mutuel Urbain GIE (PMU) versus Unibet International LTD, Unibet London LTD and Global Entertainment Antigua LTD.
- Subject: Validity of the trade mark, infringement
The offer of the economic interest grouping called Pari Mutuel Urbain (PMU) includes betting on horse races called "Simple", "Couplé", "Tiercé", "Quinté +", "2 sur 4" and "Multi". The PMU registered these names as trade marks to cover the goods and services that refer to horse race bets.
Further to French Law No. 2010-476 of 12 May 2010, the PMU's exclusive right relating to horse race betting was open to competition, but only for online betting.
Without prior authorisation, Unibet International Limited, Unibet London Limited and Global Entertainment Antigua Limited reproduced the PMU's trade marks and used the colour code associated with each type of race bet on their websites accessible in France.
PMU therefore initiated a legal action for infringement and unfair competition before the District Court (Tribunal de Grande Instance) of Paris.
The Court rejected PMU's claims related to counterfeiting and annulled the registrations of the adverse parties' trade marks in favour of PMU.
However, it held that the companies had engaged in commercial free-riding, prejudicing PMU. PMU filed an appeal of this decision.
The Court of Appeal of Paris partially confirmed the lower court's decision and held that the signs referred to above constitute official designations and are necessary for horse race betting, which is regulated by ministerial orders that are mandatory for all horse race betting operators, and are descriptive and customary to designate horse race bets. PMU misused their trade mark right in order to continue to benefit from the monopoly it had before the Law of 12 May 2010. It therefore confirmed the annulment of the trade marks at issue.
However, it added that, by using the colour code associated with each horse race bet on their websites, the companies took advantage of PMU's intellectual and financial investments to "follow its lead in order to take advantage of the renown attached to its name and increase their horse race betting at little cost".
The Court therefore upheld the claim of commercial free-riding against Unibet International Limited, Unibet London Limited and Global Entertainment Antigua Limited.