It’s over, BUD!

The latest chapter in the saga of Anheuser-Busch against the Czech company Budejovicky Budvar, both claiming rights in the mark and name “BUDWEISER”, was resolved by the ECJ in favor of the US company (now merged with the Belgian giant InBev) by its judgment of March 29, 2011 (Case C-96/09 P)

The case was about rights in “BUD”. Anheuser-Busch had a 1996 filing date, Budejovicky Budvar brought an opposition relying on registration of “BUD” as an appellation of origin under the 1958 Lisbon Agreement with effect inter alia in France, and “BUD” protected under a bilateral agreement with the Czech Republic in Austria. Anheuser-Busch prevailed before OHIM, the Czech company before the General Court.

The Court of Justice reversed and remanded to the General Court. Anheuser-Busch had challenged the General Court’s judgment as erroneous on several grounds, claiming that “BUD” was not validly protected as a geographical indication and that “BUD” did not fulfill all the requirements of Article 8 (4) CTMR according to which any other earlier rights acquired on the basis of use may be invoked against a CTM application.

The Court of Justice rejected the challenges to the validity of the “BUD” registration and protection in spite of lower court decisions holding in favor of Anheuser-Busch on that issue: OHIM must take the earlier rights as valid unless there is a final decision in the Member State holding the indication to be invalid. As regards Article 8 (4) CTMR, the Court of Justice held that the earlier rights must have been established through use. “Use” within the meaning of Article 8 (4) CTMR was not to be interpreted as equivalent to  “genuine use” within the meaning of Articles 15 and 42 CTMR. However, contrary to the holding of the General Court, the user must have been of more than the local extent and must have covered a substantial part of the territory of the Member State where the sign is protected. Furthermore, the use must have occurred prior to the filing date (and not the publication date, as the General Court had decided) of the opposed CTM.

The Court of Justice corrected obvious errors in the judgment of the General Court, which itself had corrected serious errors in the contested OHIM decisions. That the Court of Justice accepted only some of the challenges raised by Anheuser-Busch and rejected others, notably those relating to the validity of the various rights in the appellation BUD, will not prevent Anheuser-Busch from claiming complete victory, as the Czech company is unlikely to be able to prove any use prior to the filing date of the Anheuser-Busch “BUD” mark. On the issue of whether an earlier right within the meaning of Article 8 (4) CTMR must have been used extensively or must (merely) be able to show that its scope of protection under national law (or EU law, for example relating to protected geographical indications) is nationwide (or EU-wide), the Max Planck Institute Study (subject of a separate mention in this IP Report) concludes that scope of protection rather than the territorial extent of use should be decisive.

Dr.  Alexander von Mühlendahl, J.D., LL.M. Bardehle Pagenberg, Munich

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