Entain has called on the UK Intellectual Property Office (IPO) to tighten its trade mark registration process after identifying several gambling operators serving UK consumers without a licence that had successfully secured UK trade mark protections.
A recent letter written by the Group General Counsel & Chief Customer Care Officer of Entain, Simon Zinger, to Adam Williams, Chief Executive of IPO, has raised questions regarding the treatment of gambling operators who operate without licence in UK and whether they should be allowed to take advantage of the trade mark registration system that is available to legitimate businesses operating lawfully in that jurisdiction.
Entain identified 18 operators that have been targeting UK residents without having a valid Gambling Commission licence. 14 of those operatorss are operating without such a licence.
As a result, Entain suggested that the IPO require gambling operators to provide proof that they hold a valid Gambling Commission licensing before they could apply for protection of their trade marks under UK legislation and also suggested exploring other public policy provisions in UK law that could be utilized to deny applications where the applicant is engaged in illegal gambling activity.
Simon Zinger said:
The UK trade mark register is currently accessible to operators providing gambling services to UK consumers without a Gambling Commission operating licence. Operating gambling facilities in Great Britain without a licence is a criminal offence under section 33 of the Gambling Act 2005. Despite this, entities committing that offence can nonetheless register UK trade marks, acquire the commercial legitimacy that registration confers, and use the UK’s trade mark registration system to sustain operations that Parliament has expressly prohibited.
In response to the suggestion made by Entain, Adam Williams confirmed that the IPO has referred Entain’s concerns to its trade mark policy team and will discuss with Entain how to proceed with regard to those concerns. However, Mr. Williams also advised that UK law currently restricts the IPO’s authority to deny applications solely on the basis of the applicant’s type of business activity.
IPO chief executive Adam Williams said:
Both of the provisions mentioned above can only be used as the basis for an objection where there is an issue within the mark itself. The assessment of whether a mark is contrary to public policy, or whether its registration is prohibited in law, relates to the intrinsic properties of the mark itself. This does not involve an assessment of the actions of the applicant or how the mark is used.
Mr. Williams further noted that there is currently no equivalent regulatory mechanism for the IPO in place governing the issuance of trade marks by the IPO similar to that in existence at Companies House, which governs company names. He did note that all intellectual property rights in the UK have existing sanctions applied under UK law.