Victory for Budvar in BUDWEISER case

The Norwegian Board of Appeal for Industrial Property Rights has issued its decision in the long-running case between Anheuser-Busch LLC and Budejovicky Budvar NP (Case No 13/053, October 14 2014). The case concerned the registrability of the trademark BUDWEISER BUDVAR (and device). The application at issue was filed in 1993, and the decision puts an end to what might be the longest trademark application examination procedure to have ever taken place in Norway.

In 1993 Budvar filed an application for the registration of the mark BUDWEISER BUDVAR (and device) for beer in Class 32 of the Nice Classification. Following an opposition by Anheuser-Busch, the Norwegian Industrial Property Office found that Anheuser-Busch had no prior rights to the mark BUDWEISER. According to the Industrial Property Office, the term ‘Budweiser’ was used as an indication of origin and not as a distinctive sign (see Section 16(b) of the Norwegian Trademark Act). The invoked basis for revocation was therefore not applicable.  

The decision of the Industrial Property Office was appealed by Anheuser-Busch. The main question before the Board of Appeal was the interpretation of Section 16(b), and in particular whether the application for BUDWEISER BUDVAR had been filed in bad faith.

In this respect, the Board of Appeal came to the same conclusion as the Industrial Property Office, albeit based on a different reasoning. The Board of Appeal stated that the Industrial Property Office’s interpretation of Section 16(b) was incorrect.

First, the Board of Appeal found that Anheuser-Busch had used BUDWEISER as a trademark since 1876. According to the board, Anheuser-Busch’s behaviour concerning trademark use had been consistent ever since. In contrast, Budvar's use of the same term was as an indication of origin. Hence, the Board of Appeal was of the opinion that Anheuser-Busch had used the term ‘Budweiser’ as a distinctive sign before Budvar.

Second, as regards the interpretation of the term ‘bad faith’, the Board of Appeal referred to the decisions of the Court of Justice of the European Union in Malaysia Dairy (Case C-320/12) and Lindt (Case C-529/07). It followed from these decisions that the subjective factors must be determined by reference to the objective circumstances of the case.

The Board of Appeal found that Budvar had reasonable grounds for filing the application. The decisive factor in this respect was that the application was an update of an earlier logo that Budvar had an interest in protecting. A refusal of the application would mean that Budvar would have to rely on logos/labels that were no longer in use. As a result of the use requirement, all of Budvar's registrations could be cancelled due to non-use. The board also pointed out that both BUDWEISER and BUDWEISER BUDVAR had a relation to the town of Budweis.

Based on the above, the Board of Appeal found that the application had been not filed to prevent Anheuser-Busch from using its mark in Norway. Therefore, the application had not been filed in bad faith and the complaint was dismissed.

Siw Lyséll Dølvik and Felix Reimers, Advokatfirmaet Grette DA, Oslo

Amund Brede Svendsen and Astri Lund of Advokatfirmaet Grette DA handled this case on behalf of Budweiser