The Court of Justice of the European Communities dismissed an appeal by Anheuser-Busch from the General Court and the Board of Appeal at the Oppositional Division (OHIM) that its “Budweiser” trade mark should be registered despite the presence of three other “Budweiser” marks owned by Budĕjovický Budvar, národní podnik (“Budvar”), which opposed the registration of “Budweiser” by Anheuser-Busch. The case marks what is expected to be the final appeal in the seemingly never-ending dispute between the parties which has now run for more than 10 years. Anheuser-Busch, Inc. v. Budĕjovický Budvar, národní podnik and OHIM, Case No. C‑214/09 P, (ECJ, July 29, 2010).
In April 1996, Anheuser-Busch filed an application to register the word sign “Budweiser” for “beer, ale, porter, malted alcoholic and non-alcoholic beverages.” In September 1999, Budvar opposed Anheuser-Busch’s attempt to register the mark “Budweiser,” relying on the existence of its word mark “Budweiser”—registered in Germany, Austria, the Benelux region and Italy for “beer of any kind”—and two figurative marks including the words “Budweiser Budvar.” After a number of proceedings in the Opposition Division and the Boards of Appeal, Budvar’s opposition was sustained. Anheuser-Busch appealed to the General Court (formerly the Court of First Instance) and thereafter to the EU Court of Justice.
Anheuser-Busch’s appeal to the court covered three grounds, two of which were effectively based on the procedural point that Budvar should not have been able to rely on a renewal certificate for one of the marks which Budvar had submitted out of time. The court found (in agreement with the General Court) that Budvar was not in fact required on its own initiative to submit proof of the renewal of the certificate by a certain date to support its case. Rather, OHIM is entitled to require proof that an earlier mark has been renewed if that mark expires after the notice of opposition had been filed.
In respect to the third ground, the court made it clear that evidence of use of one registered trademark cannot at the same time be evidence of use of another registered trademark. However, the court noted that this third ground of appeal had not been raised earlier by Anheuser-Busch. At first instance (OHIM), Anheuser-Busch had not disputed that the documents in question related to the use of one of the other trademarks. Therefore, as this new plea extended the subject matter of the dispute, the court concluded that Anheuser-Busch could not advance it at this stage.