Casino banned from using its mark in ads

Estonia

In Consumer Protection Board v AS Kristiine Kasiino (Case 3-1-1-131-04, January 14 2005), the Supreme Court of Estonia has clarified the scope of trademark use in the context of the rules prohibiting advertising promoting gambling.

All information that is made public for the purpose of increasing the sale of products or services, promoting an event or idea, or achieving other desired results in other areas is deemed to be advertising. The Advertising Act provides that advertising of gambling and casinos is prohibited except in the location where the gambling takes place.

The Consumer Protection Board had imposed a fine on AS Kristiine Kasiino (KK) for violating that provision. The board ruled that KK's use of posters featuring its trademark KRISTIINE KASIINO on the roof of its main building and near its other gambling centres infringed the act. KK appealed.

It claimed that its use of the mark was not with reference to casinos or gambling. KK argued that the Trademark Act does not prohibit a casino operator from registering a trademark for goods and services that are unrelated to casinos and gambling. It stated that KRISTIINE KASIINO is registered in five classes of the Nice Classification for various goods and services. Therefore, its use of the mark on posters should be considered as a reference to the company rather than its gambling centres.

The main question before the court was whether the use and registration of the trademark in respect of other goods and services had any significance in this case. In an earlier case, the Supreme Court had confirmed that a poster featuring the trademark of a casino operator constitutes prohibited advertising promoting gambling (see Casino's luck runs out in dispute over gambling ads). In the case at hand, the court clarified that it is irrelevant whether the trademark is also used for other goods or services. Where a trademark is used for gambling or casinos and is associated with those activities and locations, such use should be considered prohibited advertising, even if the trademark is used for other services. The court dismissed the argument that the use of KRISTIINE KASIINO referred to the company rather than to the company's services. It noted that KK operates a chain of casinos, therefore the main aim of promoting the company is to find new customers for its services (ie, new clients to gamble in its casinos).

Mari Toomsoo, Käosaar & Co, Tartu

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