The court will play an instant lottery – Newspaper Kommersant No. 1 (7446) dated 01/09/2023

Stoloto is challenging the decision of Rospatent to refuse registration of the Scratch lotto trademark. The service considers that words do not have a distinctive ability: this is the name of all instant lotteries with an erasable protective layer. The company also intends to seek trademark registration in order to develop this type of lottery. Lawyers consider the chances of registering a mark without modification low.

“Kommersant” found in the filing cabinet of arbitration cases that on February 6, the intellectual property court will consider the application of the distributor of lottery tickets JSC Technological Company Center (Stoloto brand) in which the company is trying to challenge the decision of Rospatent to refuse to register a trademark. We are talking about a combined designation with the words “Scratch lotto scratch lotto”: according to the Rospatent document database, the office refused to register as early as February 9, 2022.

The conclusion states that the verbal elements of “Scratch lotto scratch lotto” are not subject to protection, since “they do not have a distinctive ability and occupy a dominant position in the declared designation.”

In Stoloto, in response to the decision, they objected that Rospatent had already registered a similar trademark according to certificate No. 454774: it belonged to Smartgames Holdings Limited, an offshore company from the Virgin Islands (the protection period ended in October 2020). Rospatent argued that it was impossible to register a designation for the classes associated with lotteries, since the words “scratch loto” are used to refer to a type of lottery.

“Scratch-lotto” (“scratch” in translation from English “scratch” or “scrape”) is an instant (non-circulation) lottery using tickets with an opaque, easily washable protective layer. Tickets of such lotteries differ from other types of low cost and the ability to immediately learn about winning or losing (do not wait for the draw). Instant lotteries are considered one of the fastest growing market segments.

The portfolio of lottery products distributed by Stoloto is regularly updated, among the options considered there is Scratch lotto scratch loto, Stoloto told Kommersant, calling the receipt of trademark protection before the launch of the product “normal established business practice.” “We will seek trademark registration upon application,” the company stressed. They added that they were already developing ten instant lotteries under the brands Sports Season, Forward to Victory, and others. Rospatent did not answer Kommersant.

The fact that Rospatent has previously registered a similar trademark does not obligate you to anything in the present, says Yury Fedyukin, managing partner of Enterprise Legal Solutions. “I would call the odds rather low, since the designation “scratch lotto scratch lotto” is really just a description in English with a transcription into Russian of the general mechanism for interacting with a lottery ticket, used by other lottery organizers,” he says. Sergey Zuykov, managing partner of Zuykov & Partners, agrees with this: “There is a possibility that the intellectual property court will cancel the decision of Rospatent, since it could register a mark for goods of the 16th class – cardboard and paper products. But Stoloto does not really need these goods.”

If Rospatent’s decision cannot be challenged in court, Stoloto may try to get protection again by providing evidence of the widespread use of the claimed designation, including confirming the results of a sociological survey, says Yulia Yarnykh, a partner at Semenov & Pevzner. To increase the chances of registration of the designation, it can be finalized, added Kristina Vozhennikova, a lawyer at Intellectual Capital. “One more fragment should be added to the words “scratch” and “lotto”, so that it is not dominant in the designation, and the chances of registration will increase,” she said.

Valeria Lebedeva