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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