Anheuser-Busch wins long-running battle against Budweiser Budvar

Argentina
In re Budweiser Budvar National Corporation v Anheuser-Busch Incorporated (Case 2.071/1999, June 6 2011), the Federal Court of Appeals has upheld an opposition against the registration of the trademark BUDEJOVICKY BUDVAR, thereby putting an end to a longstanding dispute between the parties in Argentina.

Czech brewery Budweiser Budvar National Corporation filed applications to register BUDEJOVICKY BUDVAR in Class 32 of the Nice Classification for “beer” and in Classes 16, 21 and 25 for promotional products. US brewery Anheuser-Busch Incorporated opposed the applications based on its registrations for the marks BUDWEISER and BUD in Classes 32 and 25. Anheuser-Busch also counterclaimed, seeking an order requiring that Budweiser Budvar cease advertising its beer in Argentina under the name Budweiser Budvar, or under any other name containing the terms 'Bud', 'Budweiser', 'Budejovicky', 'Budvar' or any other word beginning with, or containing, the term 'Bud'. It also requested that all issues of the magazine Bebidas Latinoamericanas, in which Budweiser Budvar was advertised, be withdrawn from the market.

The first instance judge found that the conflicting marks were confusingly similar and rejected the applications based on the following considerations:
  • The first syllable of both of the terms contained in the mark applied for was identical to the first syllable of Anheuser-Busch’s BUD marks;
  • The mark applied for was in Czech, a language difficult to pronounce for Spanish speakers, in contrast with the more familiar English pronunciation of Anheuser-Busch's marks; and
  • The first letter 'B' had the same typography in both marks, which could mislead consumers as to the origin of the goods.
Further, the judge stated that Budweiser Budvar infringed Anheuser-Busch’s exclusive right to use BUDWEISER in Argentina and upheld the counterclaim, ordering that Budweiser Budvar cease advertising beer under the name Budweiser Budvar or any other name including the terms 'Bud', 'Budweiser', 'Budejovicky' or 'Budvar'.

The Federal Court of Appeals upheld the lower court’s decision for similar reasons. It pointed out that trademarks must be distinctive and that the mere possibility of confusion is a bar to coexistence. Moreover, the court considered that Anheuser-Busch's BUDWEISER mark was well known for beer and that its products were extensively sold in Argentina.

The court further held that, since trademark protection is territorial, the reputation of Budweiser Budvar in the Czech Republic and registrations obtained in other countries had no influence in this case.

With respect to the counterclaim, the court established that Budweiser Budvar's use of the mark BUDWEISER BUDVAR in Argentina constituted an act of unfair competition in violation of Article 10bis of the Paris Convention for the Protection of Industrial Property.

This decision puts an end to the dispute between the parties in Argentina. The breweries have been battling over the right to use the BUDWEISER mark in several countries.
 
Agustina Martínez Estrada, G Breuer, Buenos Aires

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