No extended protection for 'Budweiser' under Lisbon Agreement

In a series of joined cases relating to a number of Community trademark applications for BUDWEISER filed by Anheuser-Busch Inc for goods other than beer, the European Court of First Instance (CFI) has dismissed an opposition which was based on claimed rights in the appellation of origin 'Budweiser' for beer under the Lisbon Agreement (Joined Cases T-53/04 to T-56/04, T-58/04 and T-59/04, T-57/04 and T-71/04, and T-60/04 to T-64/04, June 12 2007).

Budejowický Budvar np (Budvar) opposed the applications at the Office for Harmonization in the Internal Market (OHIM) based on, among other things, an appellation of origin protected in France under the Lisbon Agreement and trademark rights. Both sets of rights relate only to beer. Under Article L.642-2 of the French Rural Code:

"[a] geographical name which constitutes an appellation of origin … may not be used for any similar product … or for any other product … if that use is likely to misappropriate or weaken the reputation of the appellation of origin."

The OHIM Board of Appeal dismissed Budvar's claims, stating that it had failed to prove that it had a reputation in the appellation of origin in France. It further noted that a reputation in an appellation of origin cannot be presumed. Budvar appealed based on the argument that although the protection of an appellation of origin in France required proof of reputation in that country, Budvar had shown it had a reputation in the appellation of origin in the Czech Republic and this protection extended to France via the Lisbon Agreement at the same level as available in the Czech Republic. Thus, it concluded that there was no need to prove specifically the existence of a reputation in France.

The CFI confirmed the decision of the Board of Appeal. The court found that the protection conferred by the Lisbon Agreement extends to identical and similar goods only, but does not prevent member states from providing more extensive protection, (ie in relation to dissimilar products). It held that extended protection of an appellation of origin in relation to use of an identical or similar mark on dissimilar products requires that the trademark application in question is likely to misappropriate or weaken the reputation of the appellation of origin in the relevant territory (in this case France). It stated that this extended protection exists in France but requires that the claiming party fulfils the requirements of national law, namely, in this case, proof of reputation in France. As Budvar had failed to provide sufficient evidence of reputation in France it could not claim protection under the Lisbon Agreement.

Peter JA Munzinger, Bardehle Pagenberg Dost Altenburg Geissler, Munich