JUDGMENT OF THE GENERAL COURT (Second Chamber)
22 January 2013 (*)
(Community trade mark – Opposition proceedings – Applications for Community word and figurative marks BUD – Appellations ‘bud’ – Relative grounds for refusal – Article 8(4) of Regulation (EC) No 40/94 (now Article 8(4) of Regulation (EC) No 207/2009)
In Joined Cases T‑225/06 RENV, T‑255/06 RENV, T‑257/06 RENV and T‑309/06 RENV,
Budějovický Budvar, národní podnik, established in České Budějovice (Czech Republic), represented by F. Fajgenbaum, C. Petsch, S. Sculy-Logotheti and T. Lachacinski, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Anheuser-Busch LLC, formerly Anheuser-Busch, Inc., established in Saint Louis, Missouri (United States), represented by V. von Bomhard, B. Goebel and A. Renck, lawyers,
ACTIONS brought against the decisions of the Second Board of Appeal of OHIM of 14 June 2006 (Case R 234/2005‑2), 28 June 2006 (Cases R 241/2005‑2 and R 802/2004‑2) and 1 September 2006 (Case R 305/2005‑2) relating to opposition proceedings between Budějovický Budvar, národní podnik, and Anheuser-Busch, Inc.,
THE GENERAL COURT (Second Chamber),
composed of N.J. Forwood, President, F. Dehousse (Rapporteur) and J. Schwarcz, Judges,
Registrar: C. Heeren, Administrator,
having regard to the written procedure and further to the hearing on 11 September 2012,
gives the following
Judgment
Background to the dispute
1 On 1 April 1996, 28 July 1999, 11 April and 4 July 2000 the intervener Anheuser‑Busch, Inc., now Anheuser-Busch LLC, filed four applications for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The marks whose registration was sought for certain kinds of goods and services, including beers, in classes 16, 21, 25, 32, 33, 35, 38, 41 and 42 of the Nice Agreement concerning the international classification of goods and services for the purposes of the registration of marks of 15 June 1957, as revised and amended, are the word sign BUD and the following figurative sign:
3 On 5 March 1999, 1 August 2000, 22 May and 5 June 2001 the applicant Budějovický Budvar, národní podnik, filed notices of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against the registration of the marks applied for, with respect to all the goods referred to in the applications for registration.
4 In support of its oppositions, the applicant relied, in the first place, on the basis of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009), on the earlier international figurative mark reproduced below, registered under No 361566 for ‘all types of light and dark beer’, effective in Austria, Benelux and Italy:
5 The applicant relied, in the second place, on the basis of Article 8(4) of Regulation No 40/94 (now Article 8(4) of Regulation No 207/2009), on the appellation ‘bud’ as protected, first, in France, Italy and Portugal under the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of 31 October 1958, as revised and amended, (‘the Lisbon Agreement’) and, secondly, in Austria under a Treaty on the protection of indications of source, appellations of origin and other designations referring to the source of agricultural and industrial products, concluded on 11 June 1976 between the Republic of Austria and the Czechoslovak Socialist Republic, (‘the bilateral convention’) and a bilateral agreement on the application of that treaty concluded on 7 June 1979 (‘the bilateral agreement’) (referred to together as ‘the bilateral treaties’).
6 By decision of 16 July 2004, the Opposition Division of OHIM upheld the opposition filed against registration of the trade mark applied for, with respect to the ‘restaurant, bar and pub services’ (class 42) referred to in the application for registration of 4 July 2000, taking the view in particular that the applicant had shown that it had a right to the appellation of origin ‘bud’ in France, Italy and Portugal.
7 By decisions of 23 December 2004 and 26 January 2005, the Opposition Division dismissed the oppositions filed against registration of the trade marks which were the subject of the other three applications for registration, taking the view essentially that it had not been shown that the appellation of origin ‘bud’, in the case of France, Italy, Austria and Portugal, was a sign used in the course of trade of more than mere local significance.
8 In reaching that conclusion, the Opposition Division considered that the same criteria should be applied as those laid down in Article 43(2) of Regulation No 40/94 (now Article 42(2) of Regulation No 207/2009), read in the light of Rule 22(2) and (3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), those criteria relating to proof of the ‘genuine use’ of earlier marks on which an opposition is based.
9 On 21 February and 18 March 2005 the applicant filed three appeals with OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decisions of the Opposition Division of 23 December 2004 and 26 January 2005.
10 On 8 September 2004 Anheuser-Busch filed an appeal with OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94, against the decision of the Opposition Division of 16 July 2004, in so far as it upheld in part the opposition brought by the applicant. The applicant for its part claimed that the decision of the Opposition Division should be set aside in so far as it dismissed the opposition in relation to the other services in classes 35, 38, 41 and 42.
11 By decisions of 14 June, 28 June and 1 September 2006, the Second Board of Appeal of OHIM dismissed the applicant’s appeals against the decisions of the Opposition Division of OHIM of 23 December 2004 and 26 January 2005, and, by decision of 28 June 2006, it allowed Anheuser-Busch’s appeal against the decision of the Opposition Division of 16 July 2004 and dismissed in its entirety the opposition brought by the applicant (‘the contested decisions’).
12 The Board of Appeal observed, first, that the applicant no longer appeared to refer to international figurative mark No 361566 as the basis of its opposition but only to the appellation of origin ‘bud’.
13 Secondly, the Board of Appeal considered essentially that it was difficult to see how the sign bud could be considered to be an appellation of origin, or even an indirect indication of geographical origin. It concluded that an opposition could not succeed under Article 8(4) of Regulation No 40/94 on the basis of a right that was presented as an appellation of origin, but was in fact not one at all.
14 Thirdly, the Board of Appeal, applying by analogy the provisions of Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009) and Rule 22 of Regulation No 2868/95, found that the evidence produced by the applicant to show use of the appellation of origin ‘bud’ in France, Italy, Austria and Portugal was insufficient.
15 The Board of Appeal considered, fourthly, that the opposition also had to be rejected on the ground that the applicant had not shown that the appellation of origin in question gave it the right to prohibit use of the word ‘bud’ as a trade mark in France or Austria.
Proceedings before the General Court and the Court of Justice
16 By applications lodged with the Registry of the Court on 26 August (Case T‑225/06), 15 September (Cases T‑255/06 and T‑257/06) and 14 November 2006 (Case T‑309/06), the applicant brought actions for the annulment of the contested decisions.
17 By order of the President of the First Chamber of the Court of 25 February 2008, Cases T‑225/06, T‑255/06, T‑257/06 and T‑309/06 were joined for the purposes of the oral procedure, in accordance with Article 50 of the Court’s Rules of Procedure.
18 The parties presented oral argument and replied to the Court’s questions at the hearing on 1 April 2008.
19 By judgment of 16 December 2008 in Joined Cases T‑225/06, T‑255/06, T‑257/06 and T‑309/06 Budějovický Budvar v OHIM — Anheuser-Busch (BUD) [2008] ECR II‑3555 (‘this Court’s judgment’), the Court joined Cases T‑225/06, T‑255/06, T‑257/06 and T‑309/06 for the purposes of the judgment, in accordance with Article 50 of the Rules of Procedure, and annulled the contested decisions. It ordered OHIM to bear its own costs and pay two-thirds of the applicant’s costs. It also ordered Anheuser-Busch to bear its own costs and pay one-third of the applicant’s costs.
20 The Court held, first, in connection with the first part of the applicant’s single plea in law, that the Board of Appeal had infringed Article 8(4) of Regulation No 40/94 by holding that the claimed earlier right protected under the Lisbon Agreement and the bilateral convention was not an ‘appellation of origin’, and that the question whether the sign BUD was treated as a protected appellation of origin, in France and Austria in particular, was of ‘secondary importance’, and by concluding that an opposition could not succeed on that basis (this Court’s judgment, paragraphs 92 and 97).
21 Secondly, in connection with the first complaint in the second part of the applicant’s single plea in law, the Court called in question the Board of Appeal’s application of the condition of use in the course of trade of a sign of more than mere local significance, as laid down in Article 8(4) of Regulation No 40/94.
22 The Court considered, to begin with, that the Board of Appeal had erred in law by deciding to apply by analogy the provisions of European Union law relating to ‘genuine’ use of an earlier trade mark, in particular to determine whether the signs concerned had been used ‘in the course of trade’ in each of Austria, France, Italy and Portugal, and to do so separately. According to the Court, the Board of Appeal ought to have determined whether the evidence provided by the applicant in the course of the administrative proceedings reflected use of the signs concerned in the context of a commercial activity with a view to economic advantage, and not as a private matter, whatever the territory concerned by that use (this Court’s judgment, paragraph 168). The Court further said in this connection that it did not follow from Article 8(4) of Regulation No 40/94 that the opposing party had to show that the sign concerned had been used prior to the Community trade mark application. At most it might be required that the sign concerned had been used before publication of the trade mark application in the Community Trade Marks Bulletin (this Court’s judgment, paragraph 169). The Court concluded that, in the light of all the documents submitted by the applicant to OHIM, the applicant had provided proof that the signs concerned were used in the course of trade, within the meaning of Article 8(4) of Regulation No 40/94, contrary to the conclusion of the Board of Appeal (this Court’s judgment, paragraph 177).
23 Next, the Court considered that the Board of Appeal had also erred in law when, as regards France, it linked proof of use of the sign concerned to the requirement that the right concerned must have a significance which is not merely local. According to the Court, it sufficed to find, in that regard, that the earlier rights relied on had a significance which was not merely local inasmuch as their protection, under Article 1(2) of the Lisbon Agreement and Article 1 of the bilateral convention, extended beyond their territory of origin (this Court’s judgment, paragraph 181).
24 Thirdly, in connection with the second complaint in the second part of the applicant’s single plea in law, the Court concluded that Board of Appeal had erred by not taking into account all the relevant elements of fact and law in determining whether, under Article 8(4) of Regulation No 40/94, the law of the Member State concerned conferred on the applicant the right to prohibit use of a subsequent mark (this Court’s judgment, paragraph 199).
25 By application lodged at the Registry of the Court of Justice on 4 March 2009, Anheuser-Busch appealed against this Court’s judgment, pursuant to Article 56 of the Statute of the Court of Justice, asking the Court of Justice to set that judgment aside, with the exception of part 1 of the operative part joining the cases for the purposes of the judgment.
26 By judgment of 29 March 2011 in Case C‑96/09 P Anheuser-Busch v Budějovický Budvar (‘the judgment on appeal’), the Court of Justice found that this Court had not erred by upholding the first part and the second complaint in the second part of the applicant’s single plea, but found that, as regards the application of the condition of use in the course of trade of a sign of more than mere local significance, laid down in Article 8(4) of Regulation No 40/94 (see paragraphs 21 to 23 above), which was the subject of the first complaint in the second part of the single plea, this Court had made errors of law.
27 Consequently, the Court of Justice set this Court’s judgment aside ‘in so far as the [General] Court, with regard to the interpretation of Article 8(4) of Council Regulation [No 40/94], erred in holding, first, that the significance of the sign concerned, which cannot be merely local, must be evaluated exclusively by reference to the extent of the territory in which the sign is protected, without taking account of its use in that territory, second, that the relevant territory for the purpose of evaluating the use of that sign is not necessarily the territory in which the sign is protected and, finally, that the use of the sign does not necessarily have to occur before the date of the application for registration of the Community trade mark’ (judgment on appeal, part 1 of the operative part).
28 The Court of Justice dismissed the remainder of the appeal.
29 In addition, the Court of Justice stated that, ‘[i]n order to evaluate [the applicant’s] plea in law concerning the way in which the Board of Appeal applied the condition relating to use in the course of trade of a sign of more than mere local significance, it is necessary to undertake an assessment of the probative value of the factual elements that may establish that in the present case that condition is satisfied on the basis of the explanation of that condition given in this judgment – factual elements which include, in particular, the documents produced by [the applicant] that are mentioned at paragraphs 171 and 172 of the judgment under appeal’ (judgment on appeal, paragraph 219). As the state of the proceedings did not permit judgment to be given in the matter, the Court of Justice referred Cases T‑225/06, T‑255/06, T‑257/06 and T‑309/06 back to the General Court for judgment, and reserved the costs.
30 The cases in question were allocated to the Second Chamber of the General Court.
31 The parties submitted observations within the time allowed on the further steps to be taken in the proceedings.
32 On 19 October 2011 Anheuser-Busch lodged at the Registry of the Court a copy of the judgment of the Oberster Gerichtshof (Supreme Court, Austria) of 9 August 2011. The other parties were able to submit observations on that document, which was placed in the case-file.
33 By order of the President of the Second Chamber of the Court of 22 June 2012, Cases T‑225/06 RENV, T‑255/06 RENV, T‑257/06 RENV and T‑309/06 RENV were joined for the purposes of the oral procedure and the final judgment, in accordance with Article 50 of the Rules of Procedure.
34 The parties presented oral argument and replied to the Court’s questions at the hearing on 11 September 2012.
Forms of order sought by the parties after the referral back
35 The applicant claims that the Court should:
– confirm this Court’s judgment;
– order OHIM and Anheuser-Busch to pay the costs.
36 OHIM and Anheuser-Busch contend that the Court should:
– dismiss the actions;
– order the applicant to pay the costs.
Law
37 It must be stated, as a preliminary point, that by its head of claim seeking confirmation of this Court’s judgment the applicant is seeking the annulment of the contested decisions, as it had sought in its applications.
38 Moreover, it should be recalled that the applicant relies essentially, in its application, on a single plea in law alleging breach of Article 8(4) of Regulation No 40/94. The applicant’s single plea has two parts. In the first part, the applicant challenges the Board of Appeal’s conclusion that the sign bud could not be considered to be an appellation of origin. In the second part, the applicant disputes the Board of Appeal’s assessment that the conditions of Article 8(4) of Regulation No 40/94 are not satisfied in the present case.
39 In the judgment on appeal, the Court of Justice confirmed several of this Court’s findings concerning the errors made by the Board of Appeal in the contested decisions.
40 In particular, it may be seen from the judgment on appeal that the Court of Justice did not call into question this Court’s conclusion that the first part of the single plea should be allowed. Thus the Court of Justice stated that, having found that the effects of the claimed earlier rights had not been declared definitively to be invalid in France and Austria and that those rights were valid when the contested decisions were adopted, this Court rightly concluded, in paragraphs 90 and 98 of its judgment, that the Board of Appeal ought to have taken into account the claimed earlier rights without calling in question the actual classification of those rights (judgment on appeal, paragraphs 92 and 93).
41 As regards the second part of the single plea, the Court of Justice held that this Court had not erred in law by finding that the words ‘used in the course of trade’ were not to be understood as referring to genuine use, by analogy with the provision made in Article 43(2) and (3) of Regulation No 40/94 in relation to earlier trade marks relied on in support of an opposition, as the Board of Appeal had found in the contested decisions (judgment on appeal, paragraphs 142 to 146).
42 Furthermore, referring to this Court’s finding that the fact that the sign bud had been used ‘as a trade mark’ did not mean that it had not been used in the course of trade, as the Board of Appeal had found in the contested decisions, the Court of Justice stated that the sign relied on in support of the opposition must be used as a distinctive element in that it must serve to identify an economic activity engaged in by its proprietor, a matter which, in this instance, was not in dispute (judgment on appeal, paragraphs 148 and 149).
43 Next, the Court of Justice observed that this Court had been correct to hold. In paragraph 195 of its judgment, with regard to the protection in France of the appellation of origin bud registered under the Lisbon Agreement, that the Board of Appeal could not rely on the fact that a judicial decision delivered in a France showed that the applicant had not hitherto been able to prevent Anheuser-Busch’s distributor from selling beer in France under the BUD trade mark in order to conclude that the applicant had not established fulfilment of the condition relating to the right to prohibit use of a subsequent trade mark by virtue of the sign relied on (judgment on appeal, paragraph 193).
44 Finally, as none of the judicial decisions delivered in France and Austria referred to by the Board of Appeal had acquired the authority of res judicata, the Court of Justice found that this Court had been right to hold, in paragraph 192, that the Board of Appeal could not rely solely on those decisions as the basis for its conclusion and should also have taken account of the provisions of national law relied on by the applicant in the opposition proceedings in order to assess whether, under those provisions, the applicant had the right to prohibit a subsequent trade mark on the basis of the sign it relied on (judgment on appeal, paragraphs 195 to 197).
45 However, although the contested decisions are vitiated by a number of errors, the errors are not sufficient for the Court to allow also the second part of the single plea and annul the contested decisions. The Board of Appeal considered, in the contested decisions, that the sign relied on in support of the opposition did not satisfy the condition laid down in Article 8(4) of Regulation No 40/94 relating to use in the course of trade of a sign of more than mere local significance. That finding of the Board of Appeal was sufficient in itself to dismiss the oppositions brought by the applicant against registration of the Community trade marks sought. On this point, the Court of Justice observed that this Court had made errors of law (see paragraph 27 above).
46 An assessment must therefore be made of the probative value of the factual elements produced to OHIM by the applicant that may establish that the condition relating to use in the course of trade of a sign of more than mere local significance, laid down in Article 8(4) of Regulation No 40/94, is satisfied in the present case on the basis of the definition of that condition given in the judgment on appeal.
47 It must be recalled that the object of the condition laid down in Article 8(4) of Regulation No 40/94 relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite – that is to say, important and significant in the course of trade – from preventing registration of a new Community trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the Community trade mark (judgment on appeal, paragraphs 156 to 159).
48 In the present case, the Board of Appeal considered essentially that the evidence produced by the applicant before OHIM did not allow it to be concluded, as regards France, Italy, Austria and Portugal, that a sign of more than mere local significance was used in the course of trade. It follows from its observations on the further steps to be taken in the proceedings that the applicant challenges the contested decisions only in so far as they dismiss as inadequate the evidence of the use of the sign in France and Austria.
49 The applicant, in its observations on the further steps to be taken in the proceedings, submits that the condition concerning the significance of the sign relied on cannot be assessed in the same way for rights of different nature. Thus, with respect to appellations of origin, their protection does not involve a condition of use, even if the Court seems to have added such a requirement. Any other interpretation would amount to regarding appellations of origin as revocable rights, which would be contrary to the spirit of Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (OJ 2006 L 93, p. 12). Once an appellation of origin has been registered, the conditions of Article 8(4) of Regulation No 40/94 are satisfied. It suffices to prove the registration for the significance of the sign in question to be regarded as more than merely local. Moreover, in the present case, the appellation of origin in question is protected at national, bilateral and international level. Its significance is not thus local. Further, the applicant points out that the protection of a product related to an appellation of origin is limited, as are its exports. The production of a product covered by an appellation of origin in fact remains to a great extent in its country of origin. The applicant also states that the beer market is a specific market, and recalls that the political status of the Czech Republic was preceded by a regime which restricted exports. Finally, the applicant submits that the condition of use of the sign relied on in the course of trade is qualitative, not quantitative. The General Court should take those factors into account in its assessment of the facts of the present case.
50 As regards use of the sign relied on in France, the applicant states that it produced the same evidence of use of the sign as in Joined Cases T‑60/04 to T‑64/04 Budějovický Budvar v OHIM — Anheuser-Busch (BUD), judgment of 12 June 2007, not published in the ECR. In those cases both the Board of Appeal of OHIM and the General Court accepted that the applicant had proved, as regards France, use of the sign relied on in the course of trade of more than mere local significance.
51 As regards use of the sign relied on in Austria, the applicant points out, first, that in Case C‑478/07 Budějovický Budvar [2009] ECR I‑7721 the Court of Justice held that ‘Article 30 EC does not lay down specific requirements as to the quality and the duration of the use made of a designation in the Member State of origin for its protection to be justified in the light of that article’. The applicant submits, next, that the evidence it produced before OHIM demonstrates more than merely local use in Austria.
52 OHIM and Anheuser-Busch contest the applicant’s arguments. If, moreover, it were to be considered that the evidence adduced by the applicant suffices to demonstrate the existence of a sign used in the course of trade of more than mere local significance, OHIM and Anheuser-Busch invite the Court to take other factors into account. In particular, referring to Budějovický Budvar, cited in paragraph 51 above, OHIM and Anheuser-Busch submit that the failure to register the sign bud under Regulation No 510/2006 means that the protection of that sign in Austria and France from the point of view of the bilateral treaties and the Lisbon Agreement respectively was of no effect in those Member States at the time of the adoption of the contested decisions. They submit that that interpretation was confirmed, as regards Austria, by the judgment of 9 August 2011 of the Oberster Gerichtshof (paragraph 32 above). The Court is bound by European Union law in force.
53 First, if by its arguments the applicant is submitting that the condition laid down by Article 8(4) of Regulation No 40/94 relating to use in the course of trade of a sign of more than mere local significance is satisfied as regards French territory, inasmuch as the Board of Appeal considered that that condition was satisfied in earlier cases before OHIM between the same parties and concerning an identical sign relied on, those arguments must be rejected. It must be recalled in this respect that decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. The lawfulness of decisions of the Boards of Appeal must therefore be assessed purely by reference to that regulation, as interpreted by the European Union judicature, and not to a previous decision-making practice of those boards (Case C‑412/05 P Alcon v OHIM [2007] ECR I‑3569, paragraph 65, and Case T‑435/11 Universal Display v OHIM (UniversalPHOLED), not published in the ECR, paragraph 37). Moreover, if by its argument the applicant is in fact relying on a breach of the principle of equal treatment, it must be recalled that compliance with that principle must be consistent with compliance with the principle of legality (see Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑1541, paragraph 75). For reasons of legal certainty and sound administration, every application for registration must be the subject of a stringent and full examination, which must be undertaken in each individual case (Agencja Wydawnicza Technopol v OHIM, paragraph 77). That stringent and full examination must relate also to the signs relied on in support of an opposition. For the reasons given below, the Board of Appeal did not err in considering that the sign relied on in the present case did not satisfy the condition in Article 8(4) of Regulation No 40/94 of use in the course of trade of a sign of more than mere local significance. It follows that the applicant cannot rely to any purpose, in order to cast doubt on the conclusion reached by the Board of Appeal in the contested decision, on earlier decisions of OHIM (see, to that effect, Agencja Wydawnicza Technopol, paragraphs 78 and 79, and UniversalPHOLED, paragraph 39). Moreover, the trade marks sought in the earlier cases referred to by the applicant related either to marks or to products that were different from those in the present case, and the opposition proceedings were also different.
54 Secondly, the parties no longer dispute that the documents produced by the applicant before OHIM could demonstrate use of the sign relied on in the course of trade, in the sense that that use took place in the context of a commercial activity with a view to economic advantage, and not as a private matter.
55 Thirdly, with respect specifically to the Community trade mark application at issue in Case T‑309/06 RENV, it suffices to state that no item of evidence was produced by the applicant before OHIM that was earlier than the date of filing the application for the Community trade mark in question (1 April 1996). Consequently, the condition in Article 8(4) of Regulation No 40/94 of use in the course of trade of a sign of more than mere local significance is not satisfied. The Board of Appeal did not therefore err in this respect. As the Board of Appeal’s finding on this point sufficed for the opposition to be rejected (see paragraph 45 above), the application in Case T‑309/06 RENV must be dismissed.
56 Fourthly, as regards the oppositions in which the applicant relied on the protection of the sign bud in France (Cases T‑225/06 RENV, T‑255/06 RENV and T‑257/06 RENV), the documents produced before OHIM consisted of four dated invoices. However, of those invoices, some must be discarded from the analysis, as they are subsequent to the date of filing of the application for registration of the Community trade mark concerned. That is the case of one invoice (of 10 October 2000) in connection with Cases T‑225/06 RENV and T‑257/06 RENV, which relate to applications for registration of a Community mark filed on 11 April and 4 July 2000. That is also the case of two invoices (of 3 March and 10 October 2000) in connection with Case T‑225/06 RENV, which relates to an application for registration filed on 28 July 1999. Having regard to the relevant invoices in each of those cases, it is clear that they related to a very limited volume of products (0.87 hectolitres, in other words 87 litres, at most), made up of two or three deliveries from December 1997 to March 2000. In addition, the deliveries were limited to three towns at most in French territory, namely Thiais, Lille and Strasbourg. Finally, no other evidence has been put forward by the applicant to show that the sign relied on was used in advertising in the relevant territory. In view of those factors, it must be considered that the condition of use in the course of trade of a sign of more than mere local significance is not satisfied as regards French territory.
57 In so far as the applicant, in the opposition which is the subject of Case T‑257/06 RENV, relied only on the protection of the sign BUD in France, and did not rely on the protection of that sign in Austria, the Board of Appeal’s finding as to the lack of use in the course of trade of a sign of more than mere local significance was sufficient for the opposition to be rejected (see paragraph 45 above). In those circumstances, the action in Case T‑257/06 RENV must be dismissed.
58 Fifthly, as regards the oppositions in which the applicant relied on the protection of the sign BUD in Austria (Cases T‑225/06 RENV and T‑255/06 RENV), the documents produced before OHIM were the following:
– an affidavit of an employee of the applicant of June 2001, to which were annexed nine Austrian press cuttings dating from May to September 1997, relating to the product ‘Bud Super Strong’;
– an affidavit of the general manager of an Austrian beer import company of 9 August 2001, to which were annexed four invoices from the applicant (dated 26 May 1997, 22 July 1997, 21 November 1997 and 23 January 1998), eleven sales invoices from the import company to undertakings in Austria, and a list of sale prices including the product ‘Bud Strong’;
– an affidavit of the general manager of that Austrian beer import company of 7 December 2001, to which were annexed eight invoices from the applicant (dated 5 June 1998, 11 December 1998, 1 March 1999, 18 March 1999, 16 November 1999, 23 November 1999, 14 April 2000 and 20 June 2000) and eight sales invoices from the import company to undertakings in Austria;
– an affidavit of an employee of the applicant of 15 April 2005, certifying the turnover of sales of the product ‘Bud Super Strong’ in Austria from 1997 to 2004, to which were annexed several invoices from the applicant to the Austrian beer import company mentioned above, already produced, and a new invoice (dated 21 October 1999) and examples of packaging sheets for exports to the Austrian beer import company mentioned above for 1998, 1999, 2001 and 2002.
59 In the first place, it should be noted, as OHIM and Anheuser-Busch observe, that the documents produced by the applicant in the administrative procedure attest to sales that are very low in terms both of volume and turnover. Thus the invoices in the case-file demonstrate the sale of 22.96 hectolitres of the product in question for 1997 and 1998. For 1999 the invoices disclose a sales volume of 15.5 hectolitres, and 5.14 hectolitres for the period before 28 July 1999 (the period to be taken into account in Case T‑255/06 RENV). It follows that those sales amounted to 12.82 hectolitres a year on average. Even if account should be taken of the sales volumes for 1999 mentioned in the affidavit of an employee of the applicant, the sales volume for that year was 51.48 hectolitres, an average of 24.81 hectolitres a year. That sales volume must be set against the average consumption of beer in Austria, which, for the relevant period, according to information stated in the contested decisions and not challenged by the applicant, was over 9 million hectolitres a year. In terms of turnover, the affidavit of an employee of the applicant mentions the sum of CZK 44 546.76 for 1999, approximately EUR 1 200 (at 31 December 1999). According to the information in the case-file, the amounts for 1997 and 1998 were even lower.
60 In the second place, as regards the press cuttings in the case-file, they relate to a short period only, namely May to September 1997. Moreover, nothing has been put forward which would make it possible to determine precisely the coverage of those publications in terms of geography or the relevant public.
61 In the third place, as regards the invoices from the importing company to undertakings in Austria, they mention sales in eight towns in Austria (seven if only sales before 28 July 1999 are taken into account in Case T‑255/06 RENV). It may be noted that, while the product was sold in several towns in Austria, sales outside Vienna, as shown in the invoices, represent negligible volumes (24 bottles sold in six towns and 240 bottles sold in one town). Those negligible sales must be seen from the point of view of the period during which the products were marketed (from two to three years, depending on the case) and average beer consumption in Austria (over 9 million hectolitres a year).
62 In the fourth place, as regards the marketing costs mentioned in the affidavit of an employee of the applicant, they relate to all the products marketed by the applicant in Austrian territory. It is therefore not possible on that basis, as the applicant conceded at the hearing, to identify the amounts allocated to marketing the product concerned in the particular case.
63 In the fifth place, as regards the price list annexed to the affidavit of the general manager of an Austrian beer import company, which mentions the product ‘Bud Strong’, apart from the fact that it refers to a large number of beers, nothing has been put forward from which the extent or duration of the distribution of that product might be determined.
64 Having regard to all those factors, it must be considered that the applicant has not proved in the present case that the sign relied on was of more than mere local significance within the meaning of Article 8(4) of Regulation No 40/94 with respect to Austrian territory.
65 The other arguments put forward by the applicant cannot call that conclusion into question. In particular, with respect to the applicant’s assertion that the production of a product related to an appellation of origin is limited and its exports are also limited, it must be noted that in the specific case of the applicant’s situation, as it acknowledged at the hearing, its production volume is over a million hectolitres a year, half of which is exported outside the Czech Republic. The applicant’s argument therefore fails on the facts of the particular case.
66 In the light of the foregoing, without there being any need to rule on the additional arguments put forward by OHIM and Anheuser-Busch in their pleadings, the actions in Cases T‑225/06 RENV and T‑255/06 RENV must also be dismissed.
Costs
67 In the judgment on appeal, the Court of Justice reserved the costs. It is therefore for this Court to rule in this judgment on all the costs relating to the various proceedings, in accordance with Article 121 of the Rules of Procedure.
68 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Under Article 87(3), where each party succeeds on some and fails on other heads, or where the circumstances are exceptional, the Court may order that the costs be shared or that each party bear its own costs.
69 In the present case, although the applicant has been unsuccessful, it must be emphasised that the contested decisions were vitiated by a number of errors. In this Court’s judgment, those errors led the Court to uphold the first part and the second complaint in the second part of the single plea in law (see paragraphs 20 to 24 above). The errors found by the Court in this respect were confirmed by the Court of Justice in its judgment on appeal (see paragraph 26 above). In view of those factors, the Court considers on a fair assessment of the circumstances of the present case that each party must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the actions;
2. Orders each party to bear its own costs.
Forwood | Dehousse | Schwarcz |
Delivered in open court in Luxembourg on 22 January 2013.
[Signatures]