Anheuser-Busch loses bid to register BUDWEISER mark

European Union
In Anheuser-Busch Inc v Office for Harmonization in the Internal Market (OHIM), the Court of First Instance (CFI) has dashed Anheuser-Busch Inc's hopes to register the trademark BUDWEISER for beer (Case T-191/07, March 25 2009).
On April 1 1996 Anheuser applied for the registration of BUDWEISER as a Community trademark for goods in Class 32 of the Nice Classification ("beer, ale, porter, malted alcoholic and non-alcoholic beverages"). On September 28 1999 Budějovický Budvar národní podnik opposed the application under Articles 8(1)(a) and (b) of the Community Trademark Regulation (40/94) based on its international registrations for the trademark BUDWEISER for beer.

The Opposition Division of OHIM upheld the opposition. The Board of Appeal reversed the decision and referred the case back to the Opposition Division. The Opposition Division once again upheld the opposition. Anheuser filed a second appeal, which was dismissed by the Board of Appeal on March 22 2007. Anheuser appealed to the CFI.
First, Anheuser argued that the board had infringed its right to be heard under Article 73 of the regulation in that it had failed to inform Anheuser of its intention to take into consideration the earlier international mark BUDWEISER. The court held that Anheuser had had several opportunities to discuss the validity of the international mark and had done so at the opposition stage. In addition, the CFI found that Anheuser could not rely on the principle of the protection of legitimate expectations since it had never received an official confirmation that the international mark would not be taken into account in the opposition proceedings.
The CFI also rejected the argument that the board had failed to invite Anheuser to make comments on the possible consequences of OHIM v Kaul (Case C-29/05 P), which was rendered during the appeal procedure, on the issue of whether the board should take into account a certificate of renewal of the international mark BUDWEISER. The CFI held that even if Anheuser had been able to submit its comments in that regard, the outcome would not have been different. Moreover, the CFI found that the Kaul Case was not mentioned in the decision of the board and, therefore, Anheuser's claim had no factual basis.  
Second, Anheuser claimed that the documents filed by Budvar on February 27 2002 for the purpose of establishing the registration of the international mark BUDWEISER should have been excluded, as the deadline set by OHIM expired on February 26 2002. The CFI found that this argument did not affect the legality of the board's decision to take the documents into account under Article 74 of the regulation. In particular, the CFI pointed out that the documents were filed by fax - the transmission started on February 26 2002 but, due to the number of pages, ended on February 27, 48 minutes after expiry of the deadline. The CFI rejected the argument that since it was not possible to know which pages had been received on February 26 and which had been received on February 27, all of them should have been excluded. In any case, the CFI concluded that the documents had been provided in due time.
In addition, Anheuser had invoked Rule 19(4) of Regulation 1041/2005, under which OHIM shall not take into account documents that have not been submitted within the relevant time limit. The CFI held that Regulation 1041/2005 entered into force on July 25 2005 - that is, after the notice of opposition had been filed, after the time limit fixed by OHIM had expired and after Budvar had submitted evidence of renewal of its international mark. The CFI pointed out that there is nothing in the wording of the regulation to suggest that its provisions have retroactive effect.
Third, Anheuser claimed that the evidence submitted by Budvar to prove genuine use of the international mark BUDWEISER was insufficient. The CFI highlighted that proof of use must relate to the place, time, extent and nature of use of the earlier mark. The CFI also recalled that "the ratio legis of the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a trademark application is to restrict the number of conflicts between two marks", and not to assess the commercial success of an undertaking. The assessment of whether an earlier trademark has been put to genuine use must be done on a case-by-case basis.
The Board of Appeal had found that the evidence submitted by Budvar was clearly sufficient to prove genuine use of the international mark BUDWEISER. In particular, the board had referred to advertisements bearing the mark and invoices sent to customers in Germany and Austria, and to the fact that those advertisements and invoices related to the relevant period. The invoices were found to be relevant in light of the decision of the European Court of Justice in La Mer (Case C-259/02). 

As to Anheuser's argument that the board should not have taken those documents into account because they were not submitted on time, the CFI rejected it for the reasons set out in the analysis of the second plea. 
Finally, Anheuser argued that the board had violated its duty to state reasons under Article 73 of the Community Trademark Regulation in that it had failed to explain why "non-alcoholic beverages" and "beer" were similar. The CFI pointed out that by the terms "non-alcoholic beverages", the board in fact referred to "malted non-alcoholic beverages". Moreover, in its opposition, Budvar had expressly mentioned that "malted non-alcoholic beverages" and "beer of any kind" were similar, in particular because those goods all designated "malted" beverages. This was known by Anheuser, which ishas expertise in the sector concerned. Finally, Budvar had based its opposition not only on the identity of the goods, but also on the existence of a likelihood of confusion.

Therefore, the CFI dismissed the action in its entirety.
In light of the numerous factual and legal issues which were not disputed by Anheuser, its only hope was arguably the fact that the last page of the fax transmission had arrived 48 minutes late, which seems very tenuous. Moreover, had the opposition been rejected for this reason, Budvar may still have filed a cancellation action, which would have opened the door to another round of litigation.
Richard Milchior, Granrut Avocats, Paris

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