The bilateral treaty between Austria and Czechoslovakia also provided protection for the appellation 'bud':"87 In the present case, the appellation of origin ‘bud’ ... was registered on 10 March 1975. France did not declare, within the period of one year from the date of receipt of notification of the registration, that it could not ensure the protection of that appellation of origin. ... when the contested decisions were adopted, the effects of the appellation of origin at issue had not been declared invalid, in France, by a decision against which there is no appeal.
88 ... Community law relating to trade marks does not replace the laws of the Member States on trade marks ... Accordingly, the Court of First Instance has held that the validity of a national trade mark may not be called in question in proceedings for registration of a Community trade mark ...89 It follows that the system ... presupposes that OHIM takes into account the existence of earlier rights which are protected at national level. Accordingly, ... the proprietor of another sign used in the course of trade of more than mere local significance and which is effective in a Member State may, subject to the specified conditions, oppose the registration of a Community trade mark ...
90 Since the effects of the appellation of origin ‘bud’ have not been declared definitively to be invalid in France, the Board of Appeal ought ... to have taken account of the relevant national law and the registration made under the Lisbon Agreement, and did not have the power to call in question the fact that the claimed earlier right was an ‘appellation of origin’.
91 ... if the Board of Appeal had serious doubts as to whether the earlier right could be classified as an ‘appellation of origin’ and therefore as to the protection to be afforded to it under the national law relied on, when that issue was in fact the subject of court proceedings in France, the Board was entitled ... to suspend the opposition proceedings until a final judgment on the matter was delivered".
"98 ... the bilateral convention is still effective in Austria for the purposes of protecting the appellation ‘bud’. In particular, the documents lodged in the proceedings do not show that the Austrian courts have held that Austria or the Czech Republic did not intend to apply the principle of the continuity of treaties to the bilateral convention, following the break-up of the Czechoslovak Socialist Republic. Moreover, there is no indication that Austria or the Czech Republic have denounced that convention. In addition, the ongoing proceedings in Austria have not led to the adoption of a final judicial decision. ... the Board of Appeal ought to have taken into account ... Budvar’s claimed earlier right without calling in question the actual classification of that right".
The Court added that, while an earlier trade mark right upon which an opposition is based may be discounted if that trade mark has not been the subject of genuine use, the same does not apply to oppositions founded on a non-registered trade mark or another sign used in the course of trade of more than mere local significance. Accordingly,"... under Article 8(4) of Regulation No 40/94, it is possible for certain signs not to lose the rights attached to them, notwithstanding the fact that no ‘genuine’ use is made of them. ... an appellation of origin registered under the Lisbon Agreement cannot be deemed to have become generic, as long as it is protected as an appellation of origin in the country of origin. Moreover, the protection conferred on the appellation of origin is ensured without renewal of registration ... That does not mean that it is possible not to use the sign relied on ... However, the opposing party need do no more than show that the sign concerned was used in the context of a commercial activity with a view to economic advantage, and need not prove that the sign has been put to genuine use ...".
Legal context
A – International law
B – Community law
Background to dispute
C – Community trade mark applications lodged by Anheuser-Busch
D – Notices of opposition filed against the Community trade mark applications
E – Decisions of the Opposition Division
F – Decisions of the Second Board of Appeal of OHIM
Procedure and forms of order sought by the parties
Law
G – Admissibility and relevance of certain heads of claim by Budvar
H – Substance
1. The first part: the validity of the appellation of origin ‘bud’
(a) Arguments of the parties
(b) Findings of the Court
The appellation of origin ‘bud’ registered under the Lisbon Agreement
The appellation ‘bud’ protected under the bilateral convention
2. The second part: whether the conditions of Article 8(4) of Regulation No 40/94 are met
(a) Arguments of the parties
Arguments of Budvar
– The condition that the opposing party must be proprietor of the claimed earlier right
– The condition that the claimed earlier right must be used in the course of trade
– The condition relating to the right arising from the appellation concerned
Arguments of OHIM
Arguments of Anheuser-Busch
(b) Findings of the Court
The first complaint: use in the course of trade of a sign of more than mere local significance
– The requirement that the sign concerned be used in the course of trade
– The requirement relating to the significance of the sign concerned
The second complaint: the right arising from the sign relied on in support of the opposition
Costs
Това е важна победа за чешките производители на бира, както и за системата за защита на наименованията за произход във връзка със системата за защита на марки.
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For the purposes of Article 4(4)(a) of Council Directive 89/104/EEC:
– the fact that the earlier mark would be brought to mind by the average consumer when he or she encounters the later mark used for the goods or services of the later mark is in principle tantamount to the establishment of a link in the mind of the relevant public within the meaning of paragraphs 29 and 30 of the Court’s judgment in Case C-408/01 Adidas-Salomon and Adidas Benelux;
– the facts that the earlier mark has a huge reputation for certain specific types of goods or services, that those goods or services are dissimilar to the goods or services of the later mark and that the earlier mark is unique in respect of any goods or services are not sufficient in themselves to establish either such a link or unfair advantage or detriment within the meaning of that article;
– in order to decide whether a link or unfair advantage or detriment is established, the national court must take account of all factors relevant to the circumstances of the case;
– the nature of the goods or services may be relevant to determining whether there is a link, but an absence of similarity between the product areas concerned cannot be taken to imply the absence of such a link, and belief in an economic connection between the marks is not a necessary criterion;
– in order to satisfy the condition of detriment to distinctive character, (i) the earlier mark does not have to be unique, (ii) a first conflicting use is not in itself sufficient and (iii) an effect on the economic behaviour of the consumer is unnecessary.
По този начин се приема че самата репутация на Intel е достатъчна за да се иска заличаване на марка intelmark.
1. German Trademark No. 643 195, reg. August 26, 1953 (cars and parts thereof);
2. International Registration No. 179 928, based on the foregoing, reg. October 8, 1954, including Montenegro;
3. German Trademark No. 39532382.7, reg. February 29, 1996;
4. International Registration No. 459706, reg. February 24, 1981, including Montenegro;
5. International Registration No. 473 561, reg. September 29, 1982 including Montenegro;
6. US Federal trademark No. 71-668978, reg. October 1, 1956 (cars and parts thereof;
7. European Trademark Registration No. 000073098, priority date April 1, 1996, reg. December 12, 2000;
8. Brazilian Trademark Registration No. 0036269, priority date March 9, 1954.
Partner with 15 years experience | $630 per hour |
Associate with 6 years experience | $455 per hour |
Associate with 1 year experience | $280 per hour |
Partner with 15 years experience | $350 per hour |
Associate with 3 years experience | $195 per hour |
Associate with 2 year experience | $175 per hour |
Полският вестник Gazeta Prawna съобшава, че министерство на спорта на Полша обмисля възможността да продаде имената на стадионите, които ще домакинстват Евро 2012. Идеята е различните спортни съоражения да носят имена, които са търговски марки на големи международни компании спонсориращи обектите.
Франция подаде заявка за защита чрез географско означение на сорт киви KIWI DE L'ADOUR.
