In Court: registration of a Community trade mark

Judgment in Joined Cases T-225/06 RENV, T-255/06 RENV, T-257/06 RENV, and T-309/06 RENV Budějovický Budvar národní podnik v OHIM, dismissing the actions brought by Budějovický Budvar against the registration of the Community trade mark “Bud” for beer, applied for by Anheuser-Busch. Neil Baylis reports.

Background

From 1996 to 2000, US brewer Anheuser-Busch applied to the Community trade mark office (OHIM) to register the word and figurative sign “Bud” as a Community trade mark. In response, Czech brewery Budějovický Budvar filed notices of opposition to each application, citing trade mark protection in France, Italy and Portugal under the Lisbon Agreement, and in Austria under bilateral treaties entered into by Austria and the former Czechoslovakia. OHIM dismissed each of these notices of opposition, stating insufficient usage of the appellation "Bud" as referring to the Czech beer in each of the territories in which protection was claimed.

Budějovický Budvar appealed these decisions to the General Court, which rejected OHIM's dismissals, affirming that there had been sufficient usage of the mark. Anheuser-Busch then appealed the General Court's rejections to the Court of Justice, which set aside the General Court's decisions in part, leaving the General Court to reconsider the cases in light of three errors of law identified by the Court of Justice, described below.

The Law

Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (Regulation) was interpreted by the Court of Justice as establishing the following.

  • Registration of a Community trade mark may only be appealed when the mark is used in a sufficiently significant manner in the course of trade in a substantial part of the territory in which it is protected.

  • It is not sufficient for the purpose of establishing that a sign is of more than mere local significance in one Member State, that the sign is protected in a number of other Member States.

  • It is only the territory in which the sign is protected, in its entirety or part of it, in which the exclusive rights attached to the sign may enter into conflict with a Community trade mark. Use of a sign in a territory other than that in which it has trade mark protection is insufficient to prevent registration of a new trade mark in another territory.

  • A sign has to be in use on or before the date of a trade mark application in order to appeal that application. Usage after the date of application is not sufficient to establish the sign is of sufficient significance.

Judgment of the General Court

The General Court dismissed case T-309/06, as Budějovický Budvar failed to produce evidence capable of showing the use of a sign, in the course of trade of more than mere local significance, before the date of filing of Anheuser-Busch's application for a Community trade mark, being 1 July 1996.

In cases T 225/06 RENV, T 255/06 RENV and T 257/06 RENV, the Czech brewery failed to produce evidence of distribution in France beyond Thiais, Lille and Strasbourg. As such, the cases were dismissed as a result of a failure to demonstrate use of a sign in the course of trade of more than mere local significance.

Conclusion

The General Court ruled Budějovický Budvar was unable to fulfil the Regulation's definition of use of a sign in the course of trade across an entire Member State, thereby affirming Anheuser-Busch's right to register the “Bud” trade mark in its name. It is possible, however, that the dispute will continue: an appeal may be brought before the Court of Justice against the above decisions; the deadline for such an appeal would be 22 March 2013.