Joined Cases T-57/04 and T-71/04

Budějovický Budvar, národní podnik and Anheuser-Busch, Inc.

v

Office for Harmonisation in the Internal Market

(Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for a Community figurative trade mark including the terms ‘AB’, ‘genuine’, ‘Budweiser’, ‘king of beers’ – Earlier international word mark BUDWEISER – Appellations of origin registered under the Lisbon Agreement – Article 8(1)(b) and (4) of Regulation (EC) No 40/94 – Partial acceptance and partial rejection of the opposition)

Summary of the Judgment

1.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade

(Council Regulation No 40/94, Art. 8(4))

2.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade

(Council Regulation No 40/94, Art. 8(4))

1.      Article 8(4) of Regulation No 40/94 on the Community trade mark allows for opposition proceedings to be brought against an application for a Community trade mark on the basis of a sign other than an earlier trade mark.

According to the wording of Article 8(4) of that regulation, that sign must be used in the course of trade and be of more than mere local significance. Pursuant to the law of the Member State governing that sign, the ensuing rights must have been acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark. Also pursuant to the law of the Member State governing that sign, the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark.

Given that Article 8(4) of Regulation No 40/94 is in the part relating to relative grounds of refusal, and taking into account Article 74 of that regulation, the onus of proving that the sign in question confers the right to prohibit the use of a subsequent trade mark is on the opposing party before the Office for Harmonisation in the Internal Market (Trade Marks and Designs).

In that context, account must be taken, inter alia, of the national rules relied on and judicial decisions delivered in the Member State concerned. On that basis, the opposing party must demonstrate that the sign in question falls within the scope of application of the law of the Member State relied on and that it confers the right to prohibit the use of a subsequent trade mark. Further, in the context of Article 8(4), the proof put forward by the opposing party must address the matter from the perspective of the Community trade mark for which registration is sought.

(see paras 85-86, 88-89)

2.      It has not been established that the appellations of origin ČESKOBUDĚJOVICKÉ PIVO (BUDWEISER BIER), BUDĚJOVICKÉ PIVO – BUDVAR (BUDWEISER BIER – BUDVAR), BUDĚJOVICKÝ BUDVAR (BUDWEISER BUDVAR) and BUDĚJOVICKÉ PIVO (BUDWEISER BIER), registered for beer with the World Intellectual Property Organisation (WIPO) under the Lisbon Agreement and used in the course of trade of more than mere local significance within the meaning of Article 8(4) of Regulation No 40/94 on the Community trade mark, confer on their proprietor the right, on the basis of the applicable French legislation, to prohibit the use of a figurative trade mark including the word elements ‘AB’, ‘genuine’, ‘Budweiser’, ‘king of beers’, in respect of which registration as a Community trade mark is sought for goods other than beer in Classes 16, 21, 25, 30 of the Nice Agreement. No evidence was furnished to show that the appellations of origin in question possess a reputation in France or that the use of the geographical name in question, specifically for the products covered by the figurative trade mark applied for, was likely to misappropriate or weaken the reputation – assuming it had been established in France – of the appellations of origin concerned, as required by French law as a condition for the protection of appellations of origin registered under the Lisbon Agreement against the use of a geographical name for dissimilar goods or services.

(see paras 211 and 218)