Anheuser-Busch loses BUDWEISER appeal

European Union

In Anheuser-Busch v Office for Harmonisation in the Internal Market (OHIM) (C-214/09 P, July 29 2010), in the latest episode of the battle between Anheuser-Busch Inc and Budejovický Budvar národní podnik over the BUDWEISER mark, the Court of Justice of the European Union (ECJ) has dismissed Anheuser's appeal. The ECJ found that, at the time Budvar filed its opposition, there was no requirement for opponents to submit evidence indicating that national marks forming the basis of an opposition had been renewed. The ECJ thus concluded that Budvar was entitled to rely on its earlier national registration as a basis for the opposition, despite the fact that it had expired during the period set for filing evidence and that notice of its renewal had not been submitted until after that period had expired.

The dispute mainly concerned Articles 42(3) and 43(2) of the Community Trademark Regulation (40/94), which has since been replaced by the Community Trademark Regulation (207/2009). These provisions:

  • entitle opponents to file facts, evidence and arguments in support of an opposition within a period fixed by OHIM (Article 42(3)); and
  • require applicants to provide proof of genuine use of a mark relied upon in opposition proceedings, if requested to do so by the opponent (Article 43(2)).

The Community Trademark Implementation Regulation (2868/95) provides that:

  • a notice of opposition may contain particulars of the facts, evidence and arguments supporting that opposition (Rule 16(1)); and
  • these may be submitted within such period following commencement of the opposition proceedings, as OHIM may specify (Rule 16(3)).

Commission Regulation 1041/2005 amended the Implementing Regulation to require that opponents provide proof of the existence, validity and scope of protection of any earlier national mark relied upon in the opposition at the evidence-filing stage. This includes registration and, where applicable, renewal certificates.

On April 1 1996 Anheuser, a US brewer, applied to register the word mark BUDWEISER as a Community trademark for beer and other beverages. Czech brewer Budvar brought opposition proceedings on September 28 1999 based on the following pre-existing international registrations:

  • the word mark BUDWEISER, registered for "beer of any kind", with effect in Germany, Austria, Benelux and Italy;
  • a figurative mark including the words 'Budweiser Budvar', registered for "malt" and "beer", with effect in Austria, Benelux, France and Italy; and
  • a figurative mark including the words 'Budweiser Budvar', registered for "beers", with effect in Germany, Austria, Benelux, France and Italy.

Budvar also relied on a number of appellations of origin, including the word 'Budweiser', under Article 8(4) of the Community Trademark Regulation. A key issue that arose during the opposition proceedings was that the word mark BUDWEISER had expired and that Budvar had failed to supply evidence of its renewal until after the expiry of the filing period set by OHIM for the submission of evidence. OHIM did not ask to see the renewal certificate, although Budvar did file it at a later stage.

In finding for Budvar, the ECJ noted that there was nothing in the legislation which required Budvar to file the renewal certificate without a request from OHIM - a situation that has since changed as a result of the Implementing Regulation.

Anheuser had also contended that Article 74(2) of the Community Trademark Regulation had been infringed, as OHIM had assumed that the renewal certificate had been submitted in due course, thereby failing to exercise its discretion as to whether to accept it as evidence. However, as the certificate was not filed out of time (as there was no obligation for it to be filed), the ECJ dismissed this argument.

Anheuser's third ground of appeal was similarly dispatched. Anheuser had argued that Budvar's evidence of use related to a different mark to the one cited in the opposition - namely, that Budvar had not used the word mark BUDWEISER but, rather, the words 'Budweiser Budvar' in stylised script. The ECJ noted that this plea had not been put before the General Court and, therefore, was inadmissible.

The decision highlights the principle that changes to procedural rules are not retrospective, unless this is expressly stated to be the case. It is worth noting that an obligation now exists for an opponent to file evidence of renewal if it is relying on a national right that expired during the period granted for filing evidence.

Inbali Iserles, Ashurst LLP, London

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