JUDGMENT OF THE GENERAL COURT (Seventh Chamber)

29 October 2025 ( * )

( EU trade mark – Invalidity proceedings – EU word mark Powerball – Absolute ground for invalidity – Article 52(1)(b) of Regulation (EC) No 207/2009 – Bad faith )

In Case T‑375/24,

European Lotto and Betting ltd., established in Birkirkara (Malta), represented by T. Nix and D. Selmi, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Chylińska, E. Markakis and V. Ruzek, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Multi-State Lottery Association, established in Johnston, Iowa (United States), represented by T. de Haan, S. Vandezande and F. Verhoestraete, lawyers,

THE GENERAL COURT (Seventh Chamber),

composed, at the time of the deliberations, of K. Kowalik-Bańczyk, President, I. Dimitrakopoulos and B. Ricziová (Rapporteur), Judges,

Registrar: G. Mitrev, Administrator,

having regard to the written part of the procedure,

further to the hearing on 4 July 2025,

gives the following

Judgment

1 By its action under Article 263 TFEU, the applicant, European Lotto and Betting ltd., seeks the annulment in part of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 May 2024 (Case R 1915/2022-1) (‘the contested decision’).

Background to the dispute

2 On 30 April 2021, the intervener, Multi-State Lottery Association, filed with EUIPO an application for a declaration of invalidity in respect of the EU trade mark which had been registered following an application filed by Mr Tobias Roth on 7 May 2014 in respect of the word sign Powerball. That mark was subsequently transferred to one of the subsidiaries of the Lottoland group, Cavour Limited, and subsequently to the applicant, another subsidiary of that group.

3 The services covered by the contested mark in respect of which a declaration of invalidity was sought were in Classes 35, 41 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded, for each of those classes, to the following description:

– Class 35: ‘Business analysis, research and information services; Commercial trading and consumer information services; Business assistance, management and administrative services; Advertising, marketing and promotional services’;

– Class 41: ‘Education, entertainment and sports; Publishing and reporting; Translation and interpretation’;

– Class 42: ‘Design services; IT services; Testing, authentication and quality control; Science and technology services’.

4 The ground relied on in support of the application for a declaration of invalidity was that set out in Article 59(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

5 On 2 August 2022, the Cancellation Division upheld the application for a declaration of invalidity in its entirety.

6 On 29 September 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

7 By the contested decision, the Board of Appeal upheld the appeal in so far as it related to the application for a declaration of invalidity in respect of the science services in Class 42. However, the Board of Appeal dismissed the appeal in respect of all the other services in Classes 35, 41 and 42, referred to in paragraph 3 above, on the ground that the objective circumstances of the present case showed bad faith on the part of the proprietor of the contested mark when filing the application for registration of that mark.

Forms of order sought

8 The applicant claims that the Court should:

– annul the contested decision in so far as the Board of Appeal dismissed the appeal;

– order EUIPO to bear its own costs and to pay those incurred by the applicant.

9 EUIPO contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs in the event that a hearing is convened.

10 The intervener claims that the Court should:

– dismiss the action;

– order the applicant to bear its own costs and to pay those incurred by the intervener.

Law

The applicable law ratione temporis

11 Given the date on which the application for registration at issue was filed, namely 7 May 2014, which is decisive for the purpose of identifying the substantive law applicable to applications for a declaration of invalidity of trade marks, the facts of the case are governed by the substantive provisions of Council Regulation No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (see, to that effect, order of 5 October 2004, Alcon v OHIM , C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO , C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Consequently, as regards the substantive rules, the references made to Article 59(1)(b) of Regulation 2017/1001 by the Board of Appeal in the contested decision and by the applicant in the application must be understood as referring to Article 52(1)(b) of Regulation No 207/2009, which is identical in content.

12 Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain , C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001.

Substance

13 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 52(1)(b) of Regulation No 207/2009 and submits, in essence, that the Board of Appeal erred in finding that the proprietor of the contested mark had acted in bad faith when filing the application for registration of that mark.

14 EUIPO and the intervener dispute the applicant’s arguments.

Preliminary observations

15 It must be borne in mind that, under Article 52(1)(b) of Regulation No 207/2009, an EU trade mark is to be declared invalid on application to EUIPO or on the basis of a counterclaim in infringement proceedings where the applicant was acting in bad faith when it filed the application for the trade mark.

16 In that regard, it should be noted that the concept of ‘bad faith’ referred to in Article 52(1)(b) of Regulation No 207/2009 is not defined, delimited or even described in any way in the legislation (see judgment of 14 May 2019, Moreira v EUIPO – Da Silva Santos Júnior (NEYMAR) , T‑795/17, not published, EU:T:2019:329, paragraph 16 and the case-law cited).

17 If a concept set out in Regulation No 207/2009 is not defined by that regulation, its meaning and scope must be determined by considering its usual meaning in everyday language, whilst also taking into account the context in which it occurs and the objectives pursued by that regulation. That applies to the concept of ‘bad faith’ referred to in Article 52(1)(b) of Regulation No 207/2009 (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO , C‑104/18 P, EU:C:2019:724, paragraphs 43 and 44).

18 According to the case-law, the concept of ‘bad faith’ referred to in Article 52(1)(b) of Regulation No 207/2009 relates to a subjective motivation on the part of the trade mark applicant, namely a dishonest intention or other ‘sinister motive’. It involves conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices (judgment of 7 July 2016, Copernicus-Trademarks v EUIPO – Maquet (LUCEO) , T‑82/14, EU:T:2016:396, paragraph 28).

19 While, in accordance with its usual meaning in everyday language, the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention, that concept must moreover be understood in the context of trade mark law, which is that of the course of trade. In that regard, the rules on the EU trade mark are aimed, in particular, at contributing to the system of undistorted competition in the European Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (judgments of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO , C‑104/18 P, EU:C:2019:724, paragraph 45, and of 29 January 2020, Sky and Others , C‑371/18, EU:C:2020:45, paragraph 74).

20 Thus, the absolute ground for invalidity referred to in Article 52(1)(b) of Regulation No 207/2009 applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating the origin of the goods and services concerned (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO , C‑104/18 P, EU:C:2019:724, paragraph 46).

21 The intention of an applicant for a trade mark is a subjective factor which must, however, be determined objectively by the competent administrative or judicial authorities. Consequently, any claim of bad faith must be the subject of an overall assessment, taking into account all the factual circumstances relevant to the particular case. It is only in that manner that a claim of bad faith can be assessed objectively (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO , C‑104/18 P, EU:C:2019:724, paragraph 47 and the case-law cited).

22 To that end, account must be taken of all the relevant factors specific to the particular case which obtained at the time of filing the application for registration of a sign as an EU trade mark, in particular: (i) the fact that the applicant knows or must know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product or service capable of being confused with the sign for which registration is sought; (ii) the applicant’s intention to prevent that third party from continuing to use such a sign; and (iii) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought (see, to that effect, judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli , C‑529/07, EU:C:2009:361, paragraph 53), those factors being, however, only examples drawn from a number of factors which may be taken into account (see judgment of 29 June 2017, Cipriani v EUIPO – Hotel Cipriani (CIPRIANI) , T‑343/14, EU:T:2017:458, paragraph 28 and the case-law cited).

23 Thus, in the context of the overall analysis undertaken pursuant to Article 52(1)(b) of Regulation No 207/2009, account may also be taken of the origin of the contested sign and its use since its creation, the commercial logic underlying the filing of the application for registration of that sign as an EU trade mark, and the chronology of events leading up to that filing (see judgment of 7 July 2016, LUCEO , T‑82/14, EU:T:2016:396, paragraph 32 and the case-law cited).

24 It is for the applicant for a declaration of invalidity to prove the circumstances which substantiate a finding that the EU trade mark proprietor had been acting in bad faith when it filed the application for registration of that mark (see judgment of 8 May 2014, Simca Europe v OHIM – PSA Peugeot Citroën (Simca) , T‑327/12, EU:T:2014:240, paragraph 35 and the case-law cited), good faith being presumed until proven otherwise (judgment of 13 December 2012, pelicantravel.com v OHIM – Pelikan (Pelikan) , T‑136/11, not published, EU:T:2012:689, paragraph 57).

25 Where EUIPO finds that the objective circumstances of the particular case which were relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith which the proprietor of the mark at issue enjoys when he or she files the application for registration of that mark, it is for the proprietor of that mark to provide plausible explanations regarding the objectives and commercial logic pursued by the application for registration of that mark (judgment of 21 April 2021, Hasbro v EUIPO – Kreativni Dogadaji (MONOPOLY) , T‑663/19, EU:T:2021:211, paragraph 43).

26 It is in the light of those considerations that the applicant’s single plea in law must be examined.

The examination of bad faith

27 In the first place, it is common ground that the intervener has been operating the Powerball lottery game in the United States since 1992, which is one of the largest lotteries in the world. It is also common ground that the Lottoland group’s business model is based on the references to names of international lotteries, including the Powerball lottery, by allowing consumers in the European Union to bet on the outcome of those lotteries. Furthermore, it is also not disputed that Mr Roth had acted as a ‘straw man’ for the applicant and the Lottoland group in the sense that Mr Roth acted as an intermediary on behalf of that group when he filed the application for registration of the contested mark, and that that man and the applicant are linked to the Lottoland group, including on the date of that filing.

28 Furthermore, it should be noted that the Board of Appeal found that the contested mark was used exclusively to identify or refer to the services provided by the intervener and not to identify those provided by the proprietor of that mark.

29 In that regard, the applicant submits that the use of the contested mark to refer to the Powerball lottery does not call into question the fact that that mark was used to designate the commercial origin of the services which it covered. The applicant submits, contrary to what is argued by the intervener, that the contested mark does not cover ‘lottery services’, but lotto betting services, including for the Powerball lottery.

30 However, it should be noted that the applicant acknowledges that it was aware of the intervener’s Powerball lottery in the United States and that it was already referring to it before the filing of the application for registration of the contested mark. Furthermore, it is apparent from the evidence submitted before EUIPO that, on the websites belonging to the Lottoland group, shortly before and after the date on which the application for registration of the contested mark was filed, the following slogans appeared, for example: ‘Play Lotto online at Lottoland’, ‘Play PowerBall Lotto Online’, ‘Play America’s No1 Lottos online … and PowerBall are now at Lottoland’, ‘Win the US PowerBall’ or ‘Learn how to play and win the PowerBall now’. It follows that, on the date on which the application for registration of the contested mark was filed, the Lottoland group used that mark to refer to the Powerball lottery and not to the commercial origin of its lotto betting services.

31 That conclusion is valid regardless of whether the references are misleading or not. However, in any event, it should be noted that the applicant acknowledged, at the hearing, that, in the light of the annexes containing screenshots of the Lottoland group’s websites on which the contested mark appears, there could be a likelihood of confusion for consumers between the services of the Lottoland group and those of the intervener.

32 In the second place, the Board of Appeal noted that Mr Roth had filed on the same day, namely 7 May 2014, first, the application for registration of the contested mark and, second, applications for revocation for non-use of EU word mark No 6 078 422 ‘POWERBALL’ and EU figurative mark No 6 082 226 of the intervener.

33 Furthermore, the Board of Appeal found that it was apparent from the evidence that, by filing the application for registration of the contested mark, the proprietor of the contested mark sought to prevent its competitors, who provided the same lotto betting services, from referring to the Powerball lottery or to compel them to take out a licence.

34 In that regard, the applicant does not dispute the intention to prevent competitors from using the contested mark. It submits, however, that that conduct, consistent with the purpose of a trade mark, was innocent, since registration of the contested mark was sought after the intervener’s rights in the marks referred to in paragraph 32 above had been revoked. Its defensive filing strategy pursued an honest commercial logic. Thus, according to the applicant, the Board of Appeal did not give sufficient weight to the chronology of events leading to the filing of the contested mark.

35 However, as EUIPO submits, although the exclusive right conferred on the proprietor of a mark, under Article 9(1) of Regulation No 207/2009, is the normal consequence of its registration, in the present case the registration of the contested mark was not intended to protect its essential function, namely to identify the commercial origin of the Lottoland group’s services, but to prevent other lotto betting providers from referring to the American Powerball lottery on the internal market. Consequently, it should be noted that that registration was not intended to contribute to a system of undistorted competition within the meaning of the case-law cited in paragraph 19 above. On the contrary, it sought, within the meaning of the case-law cited in paragraph 20 above, to undermine, in a manner inconsistent with honest practices, the interests of the competitors of the Lottoland group and to obtain an exclusive right for purposes other than those falling within the function of a trade mark.

36 Furthermore, contrary to what the applicant claims, the Board of Appeal gave sufficient weight to the chronology of events leading up to the filing of the application for registration of the contested mark, in taking into account the filing, on the same day, of applications for revocation for non-use of the intervener’s earlier marks, as stated in paragraph 32 above.

37 In that regard, it should be borne in mind that there may be situations where the application for registration of a trade mark is liable to be regarded as having been filed in bad faith notwithstanding the fact that, at the time of that application, there was no use by a third party on the internal market of an identical or similar sign for identical or similar goods or services (judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO , C‑104/18 P, EU:C:2019:724, paragraph 52).

38 In the third place, the applicant criticises the Board of Appeal for taking into account its pattern of filing third-party lottery trade marks, the fact that a panel decided that a domain name had been registered and used in bad faith by the Lottoland group, the fact that a Swedish authority had penalised an undertaking linked to the Lottoland group for infringement of a law relating to lotto betting, the fact that national newspapers and lottery operators had opposed its commercial activities in Australia, the fact that a complaint alleging bad faith had been lodged against the registration of a number of domain names by undertakings in the Lottoland group, and the fact that the contested mark had been registered by means of a ‘straw man’.

39 However, it should be noted that it is already apparent from paragraphs 35 to 37 above that the contested mark was registered with dishonest intent. Consequently, it is not necessary to rule on whether the Board of Appeal could take those other factors into account.

40 In the fourth place, in so far as the applicant claims that the Board of Appeal’s reasoning was arbitrary on the ground that it rejected the application for a declaration of invalidity in respect of the science services in Class 42 covered by the contested mark and did not adopt the same reasoning in respect of the other services in Classes 35, 41 and 42 covered by that mark, it is sufficient to note that that argument is neither developed nor substantiated and that it must therefore be rejected.

41 In the light of the foregoing, it must be held that Mr Roth was acting in bad faith when he filed the application for registration of the contested mark. It follows that the Board of Appeal was right to confirm the invalidity of that mark, pursuant to Article 52(1)(b) of Regulation No 207/2009, in respect of all the services in Classes 35, 41 and 42 referred to in paragraph 3 above, with the exception of the science services in Class 42.

42 In those circumstances, the applicant’s single plea in law must be rejected and, consequently, the action must be dismissed in its entirety.

Costs

43 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

44 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

On those grounds,

THE GENERAL COURT (Seventh Chamber)

hereby:

1. Dismisses the action;

2. Orders European Lotto and Betting ltd. to pay the costs.

Kowalik-Bańczyk

Dimitrakopoulos

Ricziová

Delivered in open court in Luxembourg on 29 October 2025.

V. Di Bucci

M. van der Woude

Registrar

President

* Language of the case: English.