Czech and U.S. brewers seeking to market their beers under the name “Bud,” have apparently been at odds since the early 1900s. In the latest installment of the dispute, the Court of Justice of the European Communities has set aside a decision of the Court of First Instance which allowed the Czech brewer to oppose Anheuser-Busch’s registration of “Bud” in Europe. Anheuser-Busch Inc. v. Budějovický Budvar, No. C-96-09 (E.C.J., decided March 29, 2011). While the Court of Justice upheld some of the lower court’s rulings, it determined that the lower court erred (i) in the factors it relied on to decide if a “sign,” or trademark, in opposition to a new registration was used in a sufficiently significant manner, and (ii) in holding that the use of the sign in opposition does not necessarily have to occur before the date of the application for new registration.
According to the Court of Justice, to prevent the registration of a new sign, “the sign in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographic extent must not be merely local, which implies, where the territory in which the sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory.” In this regard, the court said that “account must be taken of the duration and intensity of the use of that sign as a distinctive element vis-à-vis its addressees, namely purchasers and consumers as well as suppliers and competitors,” and that “the use made of the sign in advertising and commercial correspondence is of particular relevance.”
The court also held, “as a general rule, where the sign concerned is used exclusively or to a large extent during the period between filing of the application for a Community trade mark and publication of the application [which was apparently the case here], that will not be sufficient to establish that the use of the sign in the course of trade has been such as to prove that the sign is of sufficient significance.” The court remanded the case for further proceedings. According to a news source, the American brewer was allowed to sell Budweiser beer in North America over the past 100 years by agreement and tried to register the trademark in the European Union four times between 1996 and 2000. See Courthouse News Service, March 29, 2011.