This guide provides lotteries that take part in multijurisdictional games with best practices for protecting IP, as well as steps to take in the event of infringements. It is also useful for lotteries that are considering the possibility of participating in multijurisdictional games.
EUROJACKPOT
Description
The coordinated game Eurojackpot, is based on a matrix requiring the participation of licensed lotteries, and is operated locally by the licensed operator according to the national legislation applicable in its jurisdiction.
The stakes are pooled together in a common draw (twice per week) and have a shared prize fund. The Parties are authorized by the competent national authorities in the territory or territories in which they operate the coordinated game Eurojackpot.
The game formula is based on a double matrix: 5/50 + 2/12 (five out of fifty, plus two out of twelve).
The brand is the main visible aspect for the customer, who associates it with the company. Therefore, brand protection must be a clearly defined objective.
IP ownership
One partner (Westdeutsche Lotterie GmbH & Co. OHG) owns the trademarks and is responsible for protecting the IP in favor of the cooperation partners.
Best practices
- Carry out collision monitoring by a professional research institute. Report all new registrations identical and similar to the protected trademark, so as to allow further measures to be taken against the misuse.
- Undertake regular inhouse reviews (or use a service provider) of app stores and social network platforms, where customers are misled to competitor and/or unauthorized services.
- Set up a network with your licensees and contract partners, and ask for monitoring and notices of misuse in their countries.
Measures to take by the trademark owner, in case of infringement:
- File formal complaints to app stores and/or social network platforms.
- Send a warning letter and declaration of cease and desist (with penalty clause) by e-mail and/or registered letter to the infringer.
- Define success: is stopping misuse sufficient or not?
- If unsuccessful: escalate with a specialized law firm, possibly with support of the licensee or a partner law firm in the respective country of breach.
- If unsuccessful: bring action for injunction to court possibly raising claims for damages (set a real example to safeguard a trademark)
- Report about those cases – create awareness
EUROMILLIONS
Description
Services aux Loteries en Europe scrl (SLE) provides services to its shareholder lottery operators (and/or lottery operators associated to such shareholders), which offer their EuroMillions (EUML) game in the territories for which they are authorized to do so. There are 10 shareholders from 9 countries including: Austria, Brussels, France, Ireland, Luxembourg, Portugal, Spain, Switzerland, and the UK.
The shareholder lottery operators are subject to supervision by their respective regulatory authorities.
SLE is responsible for several operations including among others: the draws, and the protection of trademarks (TM). The IP working group comprises representatives from the shareholders and decides on actions to take, regarding TM monitoring, filings, prior trademark searches etc.
IP ownership
EUML trademarks are owned by SLE, which works with an external IP trademark counsel. SLE grants licenses to shareholders.
Combinations of the EUML TMs and shareholder TMs are owned by the shareholders in their respective jurisdictions.
Best practices for IP protection
- A brand policy and guidelines have been established to provide consistency with registering, use and defense of the TM (EU and national).
Measures to take by the trademark owner, in case of infringement:
- Filing of a similar/identical trademark or domain name: the IP counsel sends a cease-and-desist letter in the name of SLE, to the company filing the infringing trademark/domain name. Negotiations then start with the company, to either limit or withdraw the trademark application. Where appropriate, SLE initiates an opposition procedure.
- Unauthorized use of the EUML TM: IP counsel sends a cease-and-desist letter in the name of SLE. Negotiations. If necessary, legal action is taken by SLE, with the approval of the IP working group.
- National regulators can be contacted by each shareholder, where necessary, to ask for websites to be blocked, or further sanctions to be taken.
POWERBALL
Description
Multi-State Lottery Association (MUSL) facilitates Powerball. To date, 38 lotteries have joined the MUSL compact (Member Lottery). Each lottery is represented on the board.
Dual voting system: one vote per lottery and proportional number of votes to percentage of sales.
US lotteries not joining the compact but complying with MUSL rules can still sell (Licensee Lottery).
Percentage of gross sales from MUSL games are aggregated into common prize pool.
IP ownership
- MUSL owns and holds multiple IPs for the benefit of member lotteries
- Licenses marks for use by members
- IP includes main Powerball game and Double Play and Power Play features
- Any use or reproduction of these intellectual properties without MUSL’s specific written authorization is prohibited
- All play slips must contain game trademarks and other information required by MUSL board
- Marks, names, logos, copyrights and the like are for the use and benefit of MUSL
- Terminated members agree not to use IP
- MUSL sets quality standards for marks (colors, fonts, sizes, inclusion of ®)
- States using licensed marks agree to quality standards and agree to provide sample voided tickets to mark owner for inspection
- Licensee usage must be reasonable, avoid confusion with other games or marks, and maintain goodwill of the marks
- Licensees agree not to file application for same or similar marks
Best practices for IP protection /Measures to take by the trademark owner, in case of infringement:
- Hire a global watch service, and review the monthly reports with care to identify any existing, or use informally. This usually works, but it depends on the company.
- While not necessary, try to use the “TM” (for pending) and the “R” when using the marks (in any format) so that the world is put on notice that the marks are registered, and owned.
- When licensing the marks, MUSL includes a requirement that MUSL receive an attribution statement, such as the mark is owned by, and used with the permission of the Multi-State Lottery Association.
- Determine which offenders are worth time/money to corral. If it’s purely an information piece that shows the current grand prize amount, or winning numbers, MUSL typically does not care if they are using the marks (so long as the marks are used as required by the style guide).
MEGA MILLIONS
Description
Consortium of 10 states operate Mega Millions, which is played in 47 US jurisdictions. In 2010 a cross-selling agreement was reached with MUSL to allow sales of Powerball and Mega Millions in the same state.
IP ownership
- Early member states hold trademarks on key assets, rather than the consortium itself
- The Illinois Lottery owns the Mega Millions mark
- Member states license IP to other members and jurisdictions
