After years of litigation Anheuser-Busch Inbev Nv has obtained the rejection of the opposition filled by the Czech company Budejovicky Budvar against the registration of the European Trademark “BUD”. Both Anheuser-Busch and Budvar are beer manufacturers operating in the market since the end of the 19° century and using the name “Bud” to distinguish their products. The Czech company, owner of the mark “BUD” in Austria, Italy and the Benelux countries, and the Protected Designation of Origin (PDO) in Italy, France, Austria, Portugal, opposed the registration of European Trademark by its American competitor, which was finally rejected by the European General Court (EGC)
The present case is an interesting chance to talk about the conflict that can arise from trademark protection related to a product that has the PDO. The EGC, after changing its initial assessment, stated that “to avoid the registration of a new trademark, the prior trademark to protect must necessarily be used significantly in commercial traffic and plus must have a considerable geographical extension (not purely local). This implies that if the area of ??trademark’sprotection is not local, the said trademark must to be used in a relevant part of the territory”.
EGC stated that, to obtain the protection, the trademark should have some distinctive properties:
- the intensity of use of the trademark in the relevant territory;
- a prolonged use;
- the modality of use of the trademarks (i.e. for the purpose of advertising, business correspondence, recognition of the distinctive sign, etc.).
The use and the level of diffusion of a distinctive sign must be proved to be prior from the date of the application for registration of a European Trademark which the right is disputed. Otherwise, in the event that the use is proved from the date of submission of the trademark’s application for registration, the EGC will not recognize any relevance to the proof.
The EGC does not exempt from proving the requirements just mentioned above the trademarks whose products have gained the “PDO”. The EGC did not accept the argument that these requirements should be considered as “intrinsic factor” of the registration as they pertain to products whose production and exports are already restricted by the designation of origin (as the claimant was trying to assert).
The Czech company did not prove the requirements deemed essential by the EGC to obtain the protection from the European Trademark’s registration of the American company, and for that reason the Court dismissed the action.