Anheuser-Busch precluded from registering BUD in Switzerland

The Federal Commission of Appeal for intellectual property (IP) Rights has upheld (Case MA-WI 09-10/01) a decision of the Federal Institute of IP allowing Czech brewer Budejovický Budvar's (BB) oppositions to Anheuser-Busch Inc's applications to register the terms 'Bud' and 'American Bud' as trademarks. The commission held that a Supreme Court ruling (Case 4P.164/1998) issued in 1999 enjoining Anheuser-Busch from using its international mark BUD in Switzerland, also precluded it from applying for a Swiss registration of that mark and/or similar marks.

In 1999 the Supreme Court issued a ruling enjoining Anheuser-Busch from using in Switzerland its international mark BUD for beer and other beverages. The court came to this conclusion following submissions from BB that such use would cause confusion with its Swiss trademark registrations for BUDVAR and BUDWEISER BUDBRÄU, also for beer.

Following the ruling, Anheuser-Busch filed applications with the Federal Institute of IP to register the term 'Bud' in Classes 25 (garments and footwear) and 32 (beer) of the Nice Classification, as well as for the term 'American Bud' in Class 32 (for beer of US origin). BB opposed the applications.

The institute allowed BB's opposition actions. It held that Anheuser-Busch's new registrations for 'Bud' and 'American Bud' were likely to infringe BB's rights in its prior Swiss-registered trademarks. In particular, it noted that the addition of the geographical indication American did not render the proposed 'American Bud' registration distinctive. Anheuser-Busch appealed to the Federal Appeal Commission.

The commission upheld the institute's decision. It stated that Anheuser-Busch did not have legal standing to appeal since it is enjoined from using the BUD mark and, by implication, the term 'American Bud' as a result of the Supreme Court's ruling in 1999. In response to Anheuser-Busch's suggestion that it might consider selling the two trademarks (once registered) to a third party not bound by the Supreme Court's ruling, the commission held that third parties would not have a right to use the trademarks, unless the location of production of their goods is the Czech town of Ceské Budejovice. This, said the commission, is due to the existence of a treaty between Switzerland and the Czech Republic regarding the protection of geographical indications.

For further discussion of the long-running battle between Anheuser-Busch and BB see Anheuser-Busch finds a victory in Nigeria, Budvar set to win exclusive right to BUD in Austria, Budvar chalks up another victory against Anheuser-Busch, Anheuser-Busch fails to revoke Budvar trademarks and Anheuser-Busch wins Budweiser dispute on appeal.

Peter Heinrich, Lenz & Staehelin, Zurich