Budvar successfully opposes registration of BUD
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In Budějovický Budvar národní podnik v Office for Harmonization in the Internal Market (OHIM) (Joined Cases T-225/06, T-255/06, T-257/06 and T-309/06, December 16 2008), the Court of First Instance (CFI) has annulled decisions of the Second Board of Appeal of OHIM in which the latter had dismissed oppositions against the registration of the trademark BUD.
From April 1996 to July 4 2000 US company Anheuser-Busch Inc filed four applications for the registration of the word and figurative mark BUD as a Community trademark for various goods and services.
On August 1 2000 Czech brewery Budějovický Budvar národní podnik - a long-time opponent in various disputes across the world - filed notices of opposition under Article 42 of the Community Trademark Regulation (40/94) in respect of all the goods specified in Anheuser's applications. Budvar based its oppositions on:
- the international figurative trademark BUD, effective in Austria, Benelux and Italy;
- the appellation of origin 'bud', registered under the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration and effective in France, Italy and Portugal; and
- the appellation of origin 'bud', protected in Austria in respect of beer under a bilateral convention with the former Czechoslovakia.
The Opposition Division of OHIM partially upheld one of the oppositions filed by Budvar with regard to “restaurant, bar and pub services” (Class 42). The Opposition Division stated as follows:
- Budvar had demonstrated that it had a right to the appellation of origin 'bud' in France, Italy and Portugal. However, with regard to Italy and Portugal, the arguments put forward by Budvar were not specific enough to determine the scope of the protection relied on under the national law of these member states.
- “Restaurant, bar and pub services” in Class 42 were similar to "beer" in Class 32, which was covered by the appellation of origin 'bud'. Therefore, there was a likelihood of confusion, as the signs concerned were identical.
- In respect of the other goods, and within the context of the applicable French law, Budvar had failed to demonstrate how the use of the mark applied for was likely to weaken or undermine the reputation of the appellation of origin concerned, as the goods covered were different.
The Opposition Division dismissed the remaining oppositions. Both parties appealed.
The Board of Appeal dismissed Budvar’s appeals. The board considered that Budvar no longer appeared to refer to its international figurative mark as the basis of its opposition, but solely to the appellation of origin 'bud'. Therefore, it was difficult to see how the mark BUD could be considered to be an appellation (or designation) of origin, or even an indirect indication of geographical origin. The board concluded that an opposition could not succeed under Article 8(4) of the regulation on the basis of a right that was presented as an appellation of origin, but in fact was not one. In addition, the board held that Budvar:
- had provided insufficient proof of use of the appellation of origin 'bud' in Austria, France, Italy and Portugal; and
- had not demonstrated that the appellation of origin in question gave it the right to prohibit use of the word 'bud' as a trademark in Austria or France.
On appeal to the CFI, Budvar claimed that Article 8(4) of the regulation had been infringed. In this regard, Budvar challenged the board’s conclusion that:
- the mark BUD could not be considered as an appellation of origin; and
- the conditions of Article 8(4) were not satisfied.
Regarding the first part of Budvar’s argumentation, the CFI emphasized that the protection provided to the appellation of origin 'bud' under the Lisbon Agreement and the bilateral treaty between Austria and Czechoslovakia could not be disregarded and had to be taken into account when considering Budvar's oppositions. Thus, Budvar’s argumentation in this regard was held to be well founded.
Concerning the second part of Budvar’s argumentation, the CFI stated that the board had erred in deciding to apply by analogy the provisions of EU law relating to the genuine use of an earlier trademark. The CFI stressed that the requirements associated with proof of genuine use of an earlier trademark are not the same as those relating to proof of use, in the course of trade, of a sign covered by Article 8(4) of the regulation - particularly when the sign is an appellation of origin registered under the Lisbon Agreement or an appellation protected under a bilateral convention.
In this regard, the CFI emphasized the following points:
- Article 8(4) of the regulation does not refer to the genuine use of the sign relied on in support of an opposition.
- The European Court of Justice and the CFI have consistently held that a sign is used in the course of trade when that use occurs in a commercial activity with a view to economic advantage, and not as a private matter.
- Under Article 8(4), it is possible for certain signs not to lose the rights attached to them, notwithstanding the fact that no genuine use is made of them. In this regard, the CFI noted that an appellation of origin registered under the Lisbon Agreement cannot become generic as long as it is protected as an appellation of origin in the country of origin. Even though the protection conferred on the appellation of origin is ensured without renewal of registration, this does not mean that it is possible not to use the sign relied on pursuant to Article 8(4). However, the opposing party need do no more than show that the sign concerned was used in the context of a commercial activity with a view to economic advantage, and need not prove that the sign has been put to genuine use.
The CFI thus held in favour of Budvar and ordered Anheuser and OHIM to pay Budvar’s costs.
Lasse A Søndergaard Christensen and Christian Fleischer Christiansen, Gorrissen Federspiel Kierkegaard, Aarhus
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