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.

About The Author

For decades, manufacturers, distributors and retailers at every link in the food chain have come to Shook, Hardy & Bacon to partner with a legal team that understands the issues they face in today's evolving food production industry. Shook attorneys work with some of the world's largest food, beverage and agribusiness companies to establish preventative measures, conduct internal audits, develop public relations strategies, and advance tort reform initiatives.

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