Anheuser-Busch v Budejovicky Budvar (Intellectual property) [2011] EUECJ C-96/09 (29 March 2011)

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(Appeal – Community trade mark – Regulation (EC) No 40/94 − Article 8(4) − Application for registration of the word and figurative mark BUD − Opposition − Indication of geographical origin ‘bud’ − Protection under the Lisbon Agreement and bilateral treaties between two Member States – Use in the course of trade – Sign of more than mere local significance)

Anheuser-Busch Inc., established in Saint Louis (United States), represented by V. von Bomhard and B. Goebel, Rechtsanwälte,

Budějovický Budvar, národní podnik, established in České Budĕjovice (Czech Republic), represented by F. Fajgenbaum, T. Lachacinski, C. Petsch and S. Sculy-Logotheti, avocats,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

1 By its appeal, Anheuser-Busch Inc. (‘Anheuser-Busch’) seeks to have set aside the judgment of the Court of First Instance of the European Communities (now ‘the General Court’) 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, ‘the judgment under appeal’), by which the General Court upheld the actions brought by Budějovický Budvar, národní podnik (‘Budvar’) against the decisions of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (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) (‘the contested decisions’), concerning opposition proceedings in respect of Anheuser-Busch’s applications for registration as a Community trade mark of the sign ‘BUD’.

2 Articles 1 to 5 of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of 31 October 1958, as revised at Stockholm on 14 July 1967 and as amended on 28 September 1979 (United Nations Treaty Series, vol. 828, No 13172, p. 205) (‘the Lisbon Agreement’), provide:

3 Rules 9 and 16 of the Regulations under the Lisbon Agreement, as in force on 1 April 2002, provide as follows:

4 The appellation of origin ‘Bud’ was registered with WIPO on 10 March 1975 with the number 598, under the Lisbon Agreement.

5 On 11 June 1976, the Republic of Austria and the Czechoslovak Socialist Republic concluded a Treaty on the protection of indications of source, designations of origin and other designations referring to the source of agricultural and industrial products (‘the bilateral convention’).

6 Following approval and ratification, the bilateral convention was published in the Bundesgesetzblatt für die Republik Österreich of 19 February 1981 (BGBl. 75/1981). Pursuant to Article 16(2) thereof, the bilateral convention entered into force on 26 February 1981 for an indefinite period.

10 Point 2 of Article 5(1)B of the bilateral convention refers to beers as one of the categories of Czech products concerned by the protection established by that convention.

12 In accordance with Article 6 of the bilateral convention, an agreement on its application (‘the bilateral agreement’ and, together with the bilateral convention, ‘the relevant bilateral treaties’) was concluded on 7 June 1979.

14 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). However, Regulation No 40/94, as amended by Council Regulation (EC) No 422/2004 of 19 February 2004 (OJ 1994 L 70, p. 1; ‘Regulation No 40/94’), continues to apply to this case.

15 Article 8 of Regulation No 40/94, entitled ‘Relative grounds for refusal’ provides as follows at paragraph 4:

18 The background to the dispute before the General Court, as stated in the judgment under appeal, may be summarised as follows.

19 On 1 April 1996, 28 July 1999, 11 April and 4 July 2000, Anheuser-Busch lodged four applications at OHIM for registration of the figurative and word mark BUD as a Community trade mark for certain kinds of goods, including beer, 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.

20 On 5 March 1999, 1 August 2000, 22 May and 5 June 2001, Budvar filed notices of opposition under Article 42 of Regulation No 40/94 in respect of all the goods specified in the applications for registration.

21 In support of its opposition, Budvar relied, first of all, under Article 8(1)(b) of Regulation No 40/94, on the existence of an earlier trade mark, namely international figurative mark ‘Bud’ (No 361 566), registered for beer, effective in Austria, Benelux and Italy.

22 Budvar relied, second, under Article 8(4) of Regulation No 40/94, on the existence of the appellation ‘Bud’, as protected in France, Italy and Portugal under the Lisbon Agreement, and in Austria under the relevant bilateral treaties.

23 By decision of 16 July 2004, the Opposition Division of OHIM upheld the opposition filed against registration of the trade mark applied for in respect of ‘restaurant, bar and pub services’ (Class 42), covered by the application for registration of 4 July 2000, considering inter alia that Budvar had demonstrated that it had a right to the appellation of origin ‘bud’ in France, Italy and Portugal.

24 By decisions of 23 December 2004 and 26 January 2005, the Opposition Division dismissed the oppositions filed against the registration of the trade marks covered by the other three trade mark applications; it considered, in essence, that evidence had not been adduced to establish 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.

25 In reaching that conclusion, the Opposition Division took the view that it was necessary to apply the same criteria as those laid down in Article 43(2) of Regulation No 40/94, 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), as amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4, ‘Regulation No 2868/95’), relating to proof of the ‘genuine use’ of earlier marks on which an opposition is based.

26 Budvar then brought three appeals against the decisions of the Opposition Division of OHIM of 23 December 2004 and 26 January 2005 and also against its decision of 16 July 2004, in so far as it dismissed the opposition in respect of the other services in Classes 35, 38, 41 and 42.

27 Anheuser-Busch filed an appeal against the decision of the Opposition Division of OHIM of 16 July 2004, in so far as it partially upheld the opposition filed by Budvar.

28 By its decisions of 14 June, 28 June and 1 September 2006, the Second Board of Appeal of OHIM dismissed the appeals brought by Budvar against the decisions of the Opposition Division of OHIM of 23 December 2004 and 26 January 2005. By decision of 28 June 2006, the Board of Appeal upheld the appeal brought by Anheuser-Busch against the decision of the Opposition Division of OHIM of 16 July 2004 and dismissed the opposition filed by Budvar in its entirety.

29 In the contested decisions, the Board of Appeal, first, stated that Budvar no longer appeared to refer to the international figurative trade mark No 361 566 as the basis of its opposition, but solely to the appellation of origin ‘bud’.

30 Second, the Board of Appeal held, in essence, 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.

31 Third, the Board of Appeal held, applying by analogy Article 43(2) and (3) of Regulation No 40/94 and Rule 22 of Regulation No 2868/95, that the evidence provided by Budvar to show use of the appellation of origin ‘bud’ in France, Italy, Austria and Portugal was insufficient.

32 Finally, the Board of Appeal held that the opposition had also to be rejected on the ground that Budvar had not demonstrated 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.

33 By applications lodged at the Registry of the General 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), Budvar brought actions against the contested decisions.

34 Budvar put forward, in essence, a single plea in law, alleging infringement of Article 8(4) of Regulation No 40/94, which was divided into two parts.

35 In the first part, Budvar challenged the Board of Appeal’s finding that the sign ‘BUD’ could not be regarded as an appellation of origin. In the second part, Budvar disputed the Board of Appeal’s assessment that the conditions laid down in Article 8(4) of Regulation No 40/94 were not satisfied in the present case.

36 As regards the first part of the plea, the General Court pointed out, first, at paragraph 82 of the judgment under appeal, that when examining the contested decisions it was necessary to make a distinction between the appellation of origin ‘bud’ registered under the Lisbon Agreement and the appellation ‘bud’ protected under the bilateral convention.

37 As regards the appellation of origin ‘bud’ registered under the Lisbon Agreement, the General Court first of all stated as follows at paragraph 87 of the judgment under appeal:

38 At paragraph 88 of the judgment under appeal, the General Court then reviewed its case-law according to which, since European Union law (‘EU law’) relating to trade marks does not replace the laws of the Member States on trade marks, the validity of a national trade mark may not be called in question in proceedings for registration of a Community trade mark.

39 It concluded on that basis, at paragraph 89 of that judgment, that the system set up by Regulation No 40/94 presupposes that OHIM takes into account the existence of earlier rights which are protected at national level.

40 In paragraph 90 of the judgment under appeal, the General Court drew the following conclusion:

41 Lastly, at paragraph 91 of the judgment under appeal, the General Court added that 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, under Rule 20(7)(c) of Regulation No 2868/95, to suspend the opposition proceedings until a final judgment on the matter was delivered.

42 Consequently, the General Court held, at paragraph 92 of the judgment under appeal, that the Board of Appeal had infringed Article 8(4) of Regulation No 40/94 by holding, first, that the claimed earlier right registered under the Lisbon Agreement was not an ‘appellation of origin’ and, second, that the question whether the sign ‘BUD’ was treated as a protected appellation of origin, in France in particular, was of ‘secondary importance’, and by concluding that an opposition based on that right could not succeed.

43 As regards, second, the appellation ‘bud’ protected under the relevant bilateral treaties, the General Court pointed out, at paragraph 93 of the judgment under appeal, that it is not clear from those treaties that the indication ‘bud’ was specifically designated as an ‘appellation of origin’.

44 At paragraph 94 of the judgment under appeal, the General Court held that it followed from Article 2 of the bilateral convention that the convention is based on a wider definition than that adopted by the Board of Appeal since, if the indications or appellations concerned relate directly or indirectly to the source of a product, that is sufficient to permit them to be listed under the bilateral agreement and thereby to enjoy the protection conferred by the bilateral convention.

45 In that regard, the General Court held, at paragraph 95 of the judgment under appeal, that the Board of Appeal had made two errors: first, it held, incorrectly, that the protection of the name BUD was specifically attached to its status as an ‘appellation of origin’ under the relevant bilateral treaties, and, second, it had, in any event, employed a definition of ‘appellation of origin’ which did not correspond to the definition of the indications protected under those treaties.

46 The General Court went on to hold, at paragraph 96 of the judgment under appeal, that the fact that Budvar may have presented the claimed right as an ‘appellation of origin’ did not prevent the Board of Appeal from undertaking a comprehensive assessment of the facts and documents presented, since the restriction of the factual basis of the examination by OHIM does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources.

47 The General Court concluded, at paragraph 97 of the judgment under appeal, that the Board of Appeal had infringed Article 8(4) of Regulation No 40/94 by holding, first, that the claimed earlier right, protected under the bilateral convention, was not an ‘appellation of origin’ according to the definition adopted by the Board of Appeal and, second, that whether the sign ‘BUD’ was treated as a protected appellation of origin, inter alia in Austria, was of ‘secondary importance’, and, lastly, by concluding that an opposition on that basis could not succeed.

48 At paragraph 98 of that judgment, the General Court stated that, furthermore, the relevant bilateral treaties were still effective in Austria for the purposes of protecting the appellation ‘bud’, on the ground, in particular, that the ongoing proceedings in Austria had not led to the adoption of a final judicial decision. Thus the Court held that the Board of Appeal ought to have taken into account, pursuant to Article 8(4) of Regulation No 40/94, Budvar’s claimed earlier right without calling in question the actual classification of that right.

49 Accordingly, the General Court, at paragraph 99 of the judgment under appeal, upheld the first part of the single plea in law, alleging infringement of Article 8(4) of Regulation No 40/94.

50 As regards the second part of the single plea, concerning application of the conditions set out in Article 8(4) of Regulation No 40/94, the General Court examined the complaint concerning the requirements relating to use in the course of trade of a sign of more than mere local significance.

51 With regard, first, to the requirement relating to use of the sign ‘BUD’ in the course of trade, the General Court started by observing, at paragraph 160 of the judgment under appeal, that, in the contested decisions, the Board of Appeal had applied, by analogy, Article 43(2) and (3) of Regulation No 40/94 and the requirement of proof of ‘genuine’ use of the earlier right provided for therein.

52 At paragraph 163 of the judgment under appeal, the General Court went on to hold that the objectives and requirements associated with proof of genuine use of an earlier trade mark are not the same as those relating to proof of use, in the course of trade, of a sign covered by Article 8(4) of Regulation No 40/94, particularly when, as in the present case, the sign is an appellation of origin registered under the Lisbon Agreement or an appellation protected under the relevant bilateral treaties.

53 In that regard, the General Court found, at paragraphs 164 to 167 of the judgment under appeal, that:

54 Finally, in view of those matters, the General Court held, at paragraph 168 of the judgment under appeal, that the Board of Appeal had made an error of law by deciding to apply, by analogy, the provisions of EU law relating to the ‘genuine’ use of the earlier trade mark. According to the Court, the Board of Appeal ought to have determined whether the evidence provided by Budvar in the course of the administrative proceedings reflected use of the sign 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.

55 However, the General Court added, also at paragraph 168, that, that said, the error in method made by the Board of Appeal could justify the annulment of the contested decisions only if Budvar had established that the signs concerned were used in the course of trade.

56 In that regard, the General Court pointed out, at paragraph 169 of the judgment under appeal, that it does not follow from Article 8(4) of Regulation No 40/94 that the opponent must show that the sign concerned was used prior to the Community trade mark application but that, at most, it may be required, as for earlier trade marks, and to avoid situations where the earlier right is used solely because of opposition proceedings, that the sign concerned has been used before publication of the trade mark application in the Community Trade Marks Bulletin.

57 At paragraphs 170 to 172 of the judgment under appeal, the General Court examined the documents submitted by Budvar and, after finding that they related to use of the sign before the publication of the trade mark application concerned, concluded, at paragraph 173 of that judgment, that those documents were capable of showing, if their probative value were sufficient, that the sign concerned was ‘used’ in the course of trade.

58 Concerning the substance, the General Court held, at paragraph 175 of the judgment under appeal, that a word which serves to indicate the geographical origin of a product may be used, like a trade mark, in the course of trade, but that does not mean that the appellation concerned is used ‘as a trade mark’ and consequently loses its primary function.

59 In addition, the General Court held, at paragraph 176 of the judgment under appeal, that the probative value of the documents relating to deliveries made without charge could not be called in question since they could have been made in the context of a commercial activity with a view to economic advantage, namely to acquire new outlets.

60 Consequently, at paragraph 178 of the judgment under appeal, the General Court upheld Budvar’s complaint concerning the requirement relating to use in the course of trade, as laid down in Article 8(4) of Regulation No 40/94.

61 As regards, second, the requirement relating to the significance of the sign concerned, the General Court observed at paragraph 179 of the judgment under appeal that the Board of Appeal had considered the evidence of use of the sign in France to be insufficient to establish the existence of a right of more than merely local significance.

62 In that regard, the General Court held, at paragraphs 180 and 181 of the judgment under appeal, that the Board of Appeal had also made an error of law, since the requirement in question refers to the significance of the sign concerned, namely the geographical extent of its protection, and not to the significance of its use. In that respect, the Court held that the earlier rights in question have a significance which is not merely local inasmuch as their protection, under the Lisbon Agreement and the relevant bilateral treaties, extends beyond their territory of origin.

63 The General Court thus concluded, at paragraph 182 of the judgment under appeal, that the first complaint in the second part of the single plea in law was well founded.

64 As regards the second complaint in the second part of the single plea in law, concerning whether Budvar had provided proof that the signs concerned gave it the right to prohibit use of a subsequent mark, within the meaning of Article 8(4)(b) of Regulation No 40/94, the General Court held, at paragraph 185 of the judgment under appeal, that, given also the terms of Article 74 of that regulation, the burden of proof lies on the opponent.

65 As regards the provisions of national law relied on by Budvar in support of its opposition in order to establish that it had the right to prohibit use of the word ‘BUD’ as a trade mark in France or Austria, the General Court, at paragraph 192 of the judgment under appeal, held, first, that the Board of Appeal could not rely solely on certain judicial decisions delivered in those Member States as the basis for its conclusion that Budvar had not provided evidence that the sign concerned conferred on it the right to prohibit use of a subsequent mark, since none of those decisions had acquired the authority of res judicata.

66 The General Court, also at paragraph 192, added that, in order to satisfy itself that that requirement had been met, the Board of Appeal should also have taken account of the provisions of national law relied on by Budvar, including the Lisbon Agreement and the bilateral convention and, in particular, as regards France, of a number of provisions of the Rural Code, the Consumer Code and the Intellectual Property Code and, as regards Austria, of the basis in law for the actions brought by Budvar under the national law relied on, that is to say, Article 9 of the bilateral convention and the provisions of the Austrian legislation on trade marks and unfair competition.

67 Secondly, as regards Austria, the General Court pointed out, at paragraph 193 of the judgment under appeal, that the Board of Appeal had stated that the judgment of the Oberlandesgericht Wien (Austria) of 21 April 2005 held that the word ‘bud’ was not a place name and was not understood by Czech consumers as designating a beer from the town of České Budějovice, and that, according to the Board of Appeal, that judgment was based on findings of fact which a court of last instance would be unlikely to review.

68 However, the General Court stated, also at paragraph 193, that it was clear from the documents in the file that the judgment of the Oberlandesgericht Wien had in fact been set aside by the Oberster Gerichtshof (Austria) in a judgment delivered on 29 November 2005, in other words before the date of adoption of the contested decisions, on the ground that it had been found only that the name ‘BUD’ was not associated in the Czech Republic with any specific region or locality, whereas it should have been determined whether Czech consumers interpret that name, in relation to beer, as indicating a place or a region.

69 In that regard, the General Court held, also at paragraph 193 of the judgment under appeal, that, in view of the fact that, in its reply before the Board of Appeal, Budvar had provided a copy of its appeal to the Oberster Gerichtshof, it was open to the Board of Appeal to inform itself through the parties, or by any other means, of the outcome of the proceedings brought before the Oberster Gerichtshof.

70 In that regard, the General Court observed, also at paragraph 193 of the judgment under appeal, that OHIM must of its own motion acquaint itself, by whatever means appear necessary for that purpose, with the national law of the Member State concerned if that information is required in order to assess whether the conditions for application of a ground for refusal of registration have been met and, in particular, to assess the correctness of the facts pleaded and the probative value of the documents submitted. According to the Court, the restriction of the factual basis of the examination by OHIM does not preclude it from taking into consideration, in addition to the facts expressly relied on by the parties to the opposition proceedings, facts which are well known, that is, facts which are likely to be known by anyone or which may be learnt from generally accessible sources.

71 Thirdly, as regards France, the General Court held, at paragraph 195 of the judgment under appeal, that, contrary to what the Board of Appeal decided, it does not follow from the wording of Article 8(4) of Regulation No 40/94 that the opponent must establish that he has in fact already been able to prohibit use of a subsequent mark, which Budvar has been unable to do, but that he must only establish that he has such a right available to him.

72 At paragraph 196 of the judgment under appeal, the General Court added that, contrary to what was stated by the Board of Appeal, the appellation of origin ‘bud’ registered under the Lisbon Agreement had not been declared invalid by a judgment of 30 June 2004 of the Tribunal de grande instance in Strasbourg, since that judgment clearly states that only the ‘effects’ on French territory of the appellation of origin ‘bud’ were declared to be invalid in accordance with the relevant provisions of the Lisbon Agreement. The Court also pointed out that that judgment was under appeal and that the appeal has suspensory effect.

73 The General Court held, at paragraph 199 of the judgment under appeal, that the Board of Appeal had made an error by not taking into account all the relevant elements of fact and law in determining whether, under Article 8(4)(b) of Regulation No 40/94, the law of the Member State concerned conferred on Budvar the right to prohibit use of a subsequent mark.

74 The General Court concluded, at paragraph 201 of the judgment under appeal, that the second part of the single plea in law thus had to be considered to be well founded and, consequently, it accepted the single plea and upheld the action in its entirety.

75 Accordingly, the General Court, at paragraph 202 of the judgment under appeal, annulled the contested decisions.

79 Anheuser-Busch puts forward two pleas in law in support of its appeal. The first, which is divided into three parts, alleges infringement of Article 8(4) of Regulation No 40/94. The second alleges infringement of the provisions of Article 8(4) in conjunction with those of Article 74(1) of Regulation No 40/94.

80 OHIM states that it supports the appeal and raises two pleas in law alleging, respectively, infringement of Article 8(4) of Regulation No 40/94 and infringement of Article 74 thereof.

First plea in law, concerning infringement of Article 8(4) of Regulation No 40/94

81 By the first part of its first plea, Anheuser-Busch maintains that the General Court erred in law in holding that the Board of Appeal was not competent to determine whether Budvar had established the validity of the earlier rights that it relied on under Article 8(4) of Regulation No 40/94 when there were serious doubts as to their validity.

82 It submits that, in opposition proceedings based on ‘rights’ within the meaning of Article 8(4) of Regulation No 40/94, OHIM has to determine whether those rights actually exist, whether they are enforceable and whether they may be relied on as against the trade mark application concerned: the Board of Appeal, correctly, proceeded in that way.

83 The burden of proving that those conditions are met lies with the opponent, as is shown by Articles 43(5) and 45 of Regulation No 40/94.

84 In this case, the Board of Appeal relied on a number of court decisions, final in the case of the Italian Republic and the Portuguese Republic, and not yet final in the case of the French Republic and the Republic of Austria, from which it is apparent, as regards the former, that the appellation at issue was invalid and, as regards the latter, that the earlier right concerned was not enforceable.

85 So far as the decisions given in France and Austria are concerned, Anheuser-Busch submits that it had submitted ample evidence showing that the designation in question could not be regarded as an appellation of origin, or even a geographical indication, thereby reversing the presumption that an earlier right existed as a result of registration. It was then for Budvar to prove that the national rights on which it relied existed. The Board of Appeal, having examined the evidence submitted by Budvar, held that Budvar had not provided such proof.

86 Lastly, Anheuser-Busch criticises the General Court for drawing an analogy between Article 8(4) and Article 8(1) of Regulation No 40/94, the latter of which concerns an opposition based on an earlier trade mark and in connection with which the General Court has consistently held that OHIM does not question the validity of the earlier trade mark.

87 There is no basis for such an analogy. Those two provisions address independent and different relative grounds for refusal. A national trade mark forms a ground for refusal on the basis of its registration alone, since the trade mark laws of the Member States are harmonised by Directive 89/104. However, that is not the case of the ‘rights’ referred to in Article 8(4) of Regulation No 40/94, since they have not been subject to any harmonisation at all.

88 Budvar contends that Regulation No 40/94 does not give OHIM, as a European Union body, the power to register or cancel national trade marks. As is clear from the 11th recital in the preamble to Regulation No 40/94, it cannot be recognised that OHIM has powers unless they are specifically conferred by secondary legislation and provided that such conferment is permitted by the EC Treaty.

89 The General Court was thus correct in refusing to recognise that OHIM was competent to decide upon the validity of a national mark relied on in support of an opposition. That principle, which is also embodied in the fifth recital to Regulation No 40/94, is wholly applicable to the rights relied on by an opponent under Article 8(4) of that regulation.

90 Anheuser-Busch maintains, in essence, that the General Court made an error of law in finding that the Board of Appeal had infringed Article 8(4) of Regulation No 40/94 in so far as the Board held that the geographical indication of origin ‘Bud’, as protected under the Lisbon Agreement and the relevant bilateral treaties, could not be regarded as an appellation of origin, or even an indirect indication of geographical origin, and that an opposition could not succeed, under that provision, on the basis of those earlier rights, which were presented as an appellation of origin but which were in fact not one at all.

91 In that regard, the General Court stated, at paragraphs 87 and 98 of the judgment under appeal, that, on the date of adoption of the contested decisions, the ongoing judicial proceedings in France and Austria concerning the validity of the appellation of origin ‘bud’, as protected in France under the Lisbon Agreement, and the appellation ‘bud’, as protected in Austria by the relevant bilateral treaties, had not led to the adoption of a final decision against which there was no appeal.

92 Having found that the effects of the claimed earlier rights had not been declared definitively to be invalid in those two Member States and that those rights were valid when the contested decisions were adopted, the General Court concluded, at paragraphs 90 and 98 of the judgment under appeal, 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.

93 In so deciding, the General Court did not make an error of law such as to vitiate its judgment.

94 If an opponent is to be able, on the basis of Article 8(4) of Regulation No 40/94, to prevent registration of a Community trade mark, it is necessary – and sufficient – that, at the date on which OHIM determines whether all the conditions for opposition are met, an earlier right may be claimed which has not been declared invalid by a judicial decision that has become final.

95 In those circumstances, although it is for OHIM, when it decides upon an opposition based on Article 8(4) of Regulation No 40/94, to take into account decisions of the courts of the relevant Member States concerning the validity or classification of the earlier rights claimed to ensure that those rights continue to produce the effects required by that provision, it is not for it to substitute its assessment for that of the competent national courts – a power which, in any event, Regulation No 40/94 does not confer on it.

96 In this case, as the General Court held, the Board of Appeal, when it adjudicated upon the opposition proceedings brought by Budvar, was in a position to establish that the earlier rights claimed under Article 8(4) of Regulation No 40/94 had not been declared invalid by final judicial decisions.

97 The existence of the earlier rights claimed by Budvar, concerning the designation ‘BUD’ could, moreover, have easily been established by the Board of Appeal at the time when it determined the oppositions concerned, since the fact that those rights existed was shown by the registration of that designation under the Lisbon Agreement with effect, inter alia in France, and by its inclusion in the list of designations having effect in Austria contained in the bilateral agreement. As the Advocate General has stated at point 58 of his Opinion, the fact that that registration and listing continued to exist at that time was sufficient to establish the validity of those earlier rights for the purposes of proceedings before the Board of Appeal.

98 As to whether the earlier rights thus claimed (those relating to the appellation of origin ‘bud’, as protected under the Lisbon Agreement with effect in France, and to ‘bud’ as protected under the relevant bilateral treaties with effect in Austria) constitute signs which may be relied on in support of an opposition under Article 8(4) of Regulation No 40/94 – in view of the ruling of the Court of Justice in Case C-478/07 Budějovický Budvar [2009] ECR I-7721 stating that the system of protection laid down by Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs is exhaustive in nature (OJ 2006 L 93, p. 12) – that question was not the subject of argument before the General Court.

100 By the second part of its first plea, Anheuser-Busch criticises the General Court, in the first place, in relation to the quantity and quality of use of a sign, for having held that the requirement, laid down in Article 8(4) of Regulation No 40/94, that any ‘other sign’ within the meaning of that provision must be ‘used in the course of trade’, is to be interpreted as referring to any commercial use, however limited, provided that it is not purely a private matter, including use of a geographical indication as a trade mark and even use free of charge.

101 Anheuser-Busch maintains that the Board of Appeal had held, rightly, that it was appropriate, at the least, to regard that requirement as equivalent to the requirement for genuine use contained in Articles 15 and 43(2) and (3) of Regulation No 40/94, understood as requiring actual use of a trade mark on the market for the goods and services for which it is protected, as well as its real commercial exploitation, as opposed to mere internal use or token use made only for the purpose of maintaining the rights to the trade mark, and that this actual use must be made in accordance with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user.

102 If such a requirement did not apply under Article 8(4) of Regulation No 40/94, by reason of the autonomous EU law requirement of ‘[use] in the course of trade’, the regulation would impose more stringent requirements as to use for an earlier Community trade mark to block a trade mark application under Article 8(1) of Regulation No 40/94 than for an earlier right under Article 8(4) of Regulation No 40/94, although, unlike trade marks, such a right has not been subject to any harmonisation.

103 Unlike the Board of Appeal, the General Court did not take into account the purpose of the legal requirement of ‘use’. In Anheuser-Busch’s submission, so far as use is concerned, less is required for a finding of infringement under Article 9(1) of Regulation No 40/94 than for the maintenance of a trade mark as referred to in Articles 15 and 43(2) and (3) of the regulation. However, the most stringent requirements should apply for constituting a right such as the right of opposition under Article 8(4) of the regulation, since it may provide a ground for refusing a Community trade mark.

104 Anheuser-Busch also complains that the General Court took into account deliveries by Budvar of extremely limited quantities free of charge over a period of four years. Those deliveries cannot be regarded as genuine use in light of the case-law concerning the requirement for use (see Case C-495/07 Silberquelle [2009] ECR I-137).

105 Anheuser-Busch also criticises the General Court for considering that it was not of any relevance whether, for the purposes of Article 8(4) of Regulation No 40/94, the sign was used as a trade mark or as an appellation of origin or even as a geographical indication.

106 Just as the use of a trade mark must be made in accordance with the essential function of a trade mark to qualify as genuine, the use of an appellation of origin or geographical indication relied on as an earlier right under Article 8(4) must be made in accordance with the essential function of those signs, namely, to guarantee to the consumer the geographical origin of the goods and special qualities connected therewith.

107 Budvar maintains, by contrast, that the concept of use in the course of trade within the meaning of Article 8(4) of Regulation No 40/94 does not contain any reference to genuine use and must be regarded as a qualitative, not a quantitative, criterion since that concept, as it also appears in Articles 9 and 12 of that regulation and in Articles 5 and 6 of Directive 89/104, defines the activities for which a trade mark is protected as opposed to those for which it is not.

108 At paragraph 165 of the judgment under appeal, the General Court correctly adopted the interpretation of ‘use’ established in the settled case-law of both the Court of Justice and the General Court, namely, that use of a sign must be located ‘in the context of a commercial activity with a view to economic advantage, and not as a private matter’. For reasons of legal certainty, where the same concept is found in different provisions, it must be interpreted in the same way in each of them.

109 Earlier rights other than trade marks, referred to in Article 8(4) of Regulation No 40/94 and, in very similar terms, in Article 4(4)(b) of Directive 89/104, vary so widely that it is not possible to determine the minimum characteristics these rights must possess in order to oppose a subsequent trade mark. This is the reason why those provisions impose the additional requirement that the proprietor of the non-registered trade mark or sign establish that he is able to prohibit the use of a subsequent trade mark on the basis of the right on which he relies.

110 Furthermore, with regard to deliveries made free of charge in France of beer under the name ‘BUD’, Budvar maintains that the judgment in Silberquelle cannot be applied to circumstances such as those of the present case, since that judgment did not relate to a requirement for use of a sign ‘in the course of trade’ but to a requirement for ‘genuine use’ within the meaning of Articles 10(1) and 12(1) of Directive 89/104.

111 As regards the argument that the General Court should have established whether Budvar had demonstrated use of the sign as an appellation of origin or geographical indication and not as a trade mark, Budvar submits that Article 8(4) of Regulation No 40/94 does not impose that requirement in order for an earlier right to be relied upon and requests, in that regard, that paragraphs 174 and 175 of the judgment under appeal be confirmed. In any event, the question whether Budvar used the sign in question as an appellation of origin or as a trade mark is a question of fact in respect of which the General Court has exclusive jurisdiction.

112 In the second part of its first plea, Anheuser-Busch maintains, in the second place, with regard to the relevant territory for establishing use in the course of trade, that the General Court infringed the principle of territoriality and misinterpreted Article 8(4) of Regulation No 40/94 when it held, at paragraph 167 of the judgment under appeal, that evidence concerning territories of Member States other than that in which the right is relied on under Article 8(4) could be taken into account for the purpose of determining whether there is use in the course of trade.

113 That requirement can refer only to the use of the sign in the territory in which protection of the sign is claimed.

114 That results inter alia from the principle of territoriality which is a fundamental principle of intellectual property law. Accordingly, acts showing use of the earlier sign must relate to the specific jurisdictions in question, in the present case France or Austria, and must be examined separately for each of those jurisdictions.

115 If that were not the case, unharmonised rights under Article 8(4) of Regulation No 40/94 would be treated better than harmonised rights, since there is no doubt that the latter cannot block a Community trade mark registration unless they are put to genuine use in the territory of the Member State in which they are protected, as use in another Member State cannot be taken into account.

116 On that point, OHIM takes the same stance, namely that the relevant territory where use of the sign at issue in the course of trade must be shown for the purposes of that provision is exclusively the territory where protection is claimed, in this case, France and Austria. That is clear from the actual wording of Article 8(4) of Regulation No 40/94, since, in the same sentence, it refers to the ‘sign used in the course of trade’ and to ‘the law of the Member State governing that sign’.

117 The correct approach is that adopted at paragraph 40 of the judgment in Joined Cases T-318/06 to T-321/06 Moreira da Fonseca v OHIM – General Óptica (GENERAL OPTICA) [2009] ECR II-649, namely that the relevant territory in respect of an examination of the significance of those exclusive rights is that in which each of the legal rules from which those rights derive applies.

118 Budvar maintains, however, that the General Court was correct in holding, in connection with Article 8(4) of Regulation No 40/94, that it is not necessary to demonstrate actual use of an earlier right in the territory of the Member State where it is protected, given that those rights may be protected in those territories without ever having been used there.

119 Article 8(4) of Regulation No 40/94 requires neither that genuine use of the sign at issue be shown nor that its use on the territory where it is protected be proved.

120 In the second part of its first plea, Anheuser-Busch maintains, in the third place, as regards the period in respect of which use of earlier rights must be proved, that the General Court misinterpreted Article 8(4) of Regulation No 40/94 by rejecting the filing date of the trade mark applications as the relevant date at which use in the course of trade has to be demonstrated and by holding, at paragraph 169 of the judgment under appeal, that it is sufficient that there be proof of use before the date of publication of the trade mark application in the Community Trade Marks Bulletin.

121 In that regard, Anheuser-Busch maintains that all the requirements which must be met for an earlier right to be relied on under Article 8 of Regulation No 40/94 must be present at the time of filing of the application that is opposed, including, in the case of Article 8(4), the requirement of use in the course of trade. Accordingly, any evidence submitted for the purpose of showing such use must pre-date the filing of the application at issue or the priority date thereof.

122 Such an interpretation is confirmed, in a similar context, by the case-law according to which the reputation of an earlier trade mark relied upon by the opponent under Article 8(5) of Regulation No 40/94 must have existed at the filing date of the Community trade mark application which is opposed or at the date of priority claimed (see, in particular, Case C-108/07 P Ferrero Deutschland v OHIM [2008] ECR I-61, paragraph 35), even though Article 8(5) refers only to the trade mark being earlier and does not expressly require that the reputation also be earlier.

123 That case-law is based on the priority rule, a fundamental principle of intellectual property law which is recognised around the world, including in the fundamental treaties concerning intellectual property, which enshrines the primacy of the prior exclusive right towards rights which emerge later and establishes that a trade mark application can be challenged only on the basis of prior rights.

124 Anheuser-Busch criticises the General Court for having incorrectly applied, by analogy, Article 43(2) and (3) of Regulation No 40/94, linking anteriority to the date of publication of the trade-mark application in the Community Trade Marks Bulletin. That is also at variance with paragraph 166 of the judgment under appeal, in which the General Court rejected such application by analogy.

125 Furthermore, Article 43(2) and (3) of Regulation No 40/94 includes a rule as to priority, which is an exception and specific to maintenance of an earlier trade mark and which cannot be applied in any other context such as that of Article 8(4) of Regulation No 40/94.

126 Finally, the notion of use of a sign of ‘more than mere local significance’ is an autonomous requirement of EU law which must be satisfied, as must the other requirements laid down in Article 8(4)(a) and (b) of Regulation No 40/94 and, more generally, all the requirements laid down in Article 8, ‘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’.

127 Similarly, according to OHIM, the filing date of trade mark applications is the relevant date in respect of which use in the course of trade must be established. That principle was correctly applied in paragraph 44 of the judgment in Moreira da Fonseca v OHIM – General Óptica (GENERAL OPTICA).

128 Budvar contends, however, that the General Court’s analysis must be upheld.

129 First, the case-law of the Court of Justice concerning Article 8(5) of Regulation No 40/94 cannot be applied to Article 8(4). That case-law is justified in view of the specific nature of trade marks with a reputation, since it is highly likely that an applicant will have been aware, when he filed a subsequent trade mark application, of that reputation. In contrast, for the other types of opposition referred to in Article 8, it is only publication of an application which renders it public and ‘makes it opposable to third parties’.

130 Second, on this point the judgment under appeal is not contrary to the priority principle. That principle, expressed in Article 8(4)(a) of Regulation No 40/94, imposes on the opponent the additional requirement of proving that the earlier right relied on in support of the opposition existed prior to the filing date of the trade mark application. However, it does not require the opponent to prove that it was used before that date in the course of trade.

131 By the third part of its first plea, Anheuser-Busch claims that the General Court also infringed Article 8(4) of Regulation No 40/94 by interpreting incorrectly, at paragraphs 179 to 183 of the judgment under appeal, the words ‘of more than mere local significance’ contained in that provision.

132 Anheuser-Busch maintains, in particular, that the ‘significance’ of a sign within the meaning of Article 8(4) of Regulation No 40/94 must be assessed in relation to the territory in which it is protected, in this case France and Austria.

133 Moreover, a sign can have significance within the meaning of that provision only if it is used in the markets of the Member States under whose laws it is protected. Such significance cannot stem from the mere fact that the sign is protected under the law of two or more Member States.

134 Anheuser-Busch concludes that the words ‘more than mere local significance’ are to be interpreted as constituting an autonomous EU law requirement which cannot be subject to national law but which must result from use of the sign in question in the markets of the Member States in whose territory it is protected.

135 OHIM maintains that, by linking, at paragraph 180 of the judgment under appeal, the ‘significance’ of the sign to the territorial scope of the protection recognised by the national law relied on, the General Court overlooked the fact that the requirement laid down in Article 8(4) of Regulation No 40/94 that the sign be of more than mere local significance is an EU law requirement that cannot be assessed by reference to national law.

136 The General Court erred in law by holding, at paragraph 181 of the judgment under appeal, that the earlier rights are of more than mere local significance, within the meaning of Article 8(4) of Regulation No 40/94, solely because their protection extends beyond their territory of origin.

137 According to OHIM, the ‘significance’ criterion is meant to put an effective limit on all the potential signs, other than trade marks, which could be relied on in order to challenge the registrability of a Community trade mark. Accordingly, this notion must relate to the economic importance and the geographical ambit of the ‘[use] in the course of trade’.

138 In that regard, OHIM refers to paragraphs 36 to 39 of Moreira da Fonseca v OHIM – General Óptica (GENERAL OPTICA), in which the latter interpretation was endorsed.

139 Budvar maintains, by contrast, that the expression ‘more than mere local significance’, within the meaning of Article 8(4) of Regulation No 40/94, refers to the geographical extent of the protection of the sign at issue, namely the territory in which the opponent may assert its earlier right, in the present case all French and Austrian territories in which the rights relied on are protected by the Lisbon Agreement and the relevant bilateral treaties respectively.

140 That expression therefore refers to the territory in which the sign is protected, not that in which it is used. A contrary interpretation would conflict with the very wording of Article 8(4) of Regulation No 40/94 and, in addition, would amount to imposing on the opponent an additional requirement which, moreover, would not be consistent with Article 107 of Regulation No 40/94, which makes the territory in which the prior right is protected, and not the territory in which it is used, a criterion for implementation of an earlier right.

141 By the second and third parts of its first plea in law, which it is appropriate to consider together, Anheuser-Busch complains that the General Court infringed Article 8(4) of Regulation No 40/94 in that it misinterpreted the condition by virtue of which the earlier right relied on in support of the opposition must concern a ‘sign used in the course of trade of more than mere local significance’.

142 As regards the first point, which concerns whether the words ‘used in the course of trade’ are to be understood either as referring – as was held by the General Court – to use of an earlier right in a commercial activity with a view to economic advantage and not as a private matter, or 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, the judgment under appeal does not make an error of law.

143 Article 8(4) of Regulation No 40/94 does not concern the ‘genuine’ use of a sign relied on in support of an opposition and there is nothing in the wording of Article 43(2) and (3) of the regulation to suggest that the requirement for proof of genuine use applies to such a sign.

144 Furthermore, whilst it is true that the words ‘used in the course of trade’ in Article 8(4) of Regulation No 40/94 do not necessarily have to be interpreted in the same way as they are in relation to Article 9(1) of that regulation or Articles 5(1) and 6(1) of Directive 89/104, since account must be taken of the purpose of each of those provisions, the fact remains that if those words are interpreted as meaning, in essence, that the sign need only be put to some commercial use, such an interpretation is consistent with their usual meaning.

145 The General Court was also correct when it held, at paragraph 166 of the judgment under appeal, that, if the requirement for genuine use were imposed on the signs covered by Article 8(4) of Regulation No 40/94 on the same conditions as those set out in Article 43(2) and (3) of the regulation, such an interpretation would impose on those signs requirements specific to oppositions based on earlier trade marks, and that, by contrast with those oppositions, in oppositions under Article 8(4) of Regulation No 40/94 the opponent must also show that the sign concerned gives him the right, according to the law of the Member State concerned, to prohibit use of a subsequent trade mark.

146 Moreover, if the requirement for genuine use laid down for earlier trade marks were applied by analogy to the earlier rights referred to in Article 8(4) of Regulation No 40/94, that would also be contrary to the, in principle, autonomous nature of that relative ground for refusal, which, as the Advocate General has stated at points 69 to 71 of his Opinion, is made apparent by conditions specific to that ground and which must also be interpreted in the light of the very wide variety of earlier rights that may be covered by that ground.

147 Nor did the General Court make an error of law with regard, in the second place, to the question whether the words ‘used in the course of trade’ mean that use of a geographical indication relied on under Article 8(4) of Regulation No 40/94 must be made in accordance with the essential function of such a sign, namely to guarantee to consumers the geographical origin of the goods and the special qualities inherent in them, when, in the present case, the sign relied on was used as a trade mark.

148 The General Court, at paragraph 175 of the judgment under appeal, held that, for Article 8(4) of Regulation No 40/94 to apply, it is sufficient to find that the sign relied on in support of the opposition is used in the course of trade and that the fact that that sign is identical to a trade mark does not mean that it is not used in the course of trade.

149 As regards the function to be performed by use of the sign, the latter 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, is not in dispute.

150 In particular, the General Court added at paragraph 175 that it had not been clearly specified before it how the sign ‘BUD’ had been used ‘as a trade mark’ and that there was no evidence that the word ‘bud’, displayed on the goods in question, referred any more to the commercial origin of the product than to its geographical origin.

151 It follows that the complaint must be rejected since the General Court did not, in this respect, make an error of law such as to vitiate its judgment and since, furthermore, it is not for the Court of Justice, at the appeal stage, to review the assessment of the facts made by the General Court, given that Anheuser-Busch has not claimed before this Court that the clear sense of the facts has been distorted.

152 In the third place, contrary to the contention of Anheuser-Busch, the General Court was correct in holding, at paragraph 176 of the judgment under appeal, that deliveries made without charge could be taken into account in order to ascertain whether the requirement for use of the earlier right in the course of trade was met, since those deliveries could have been made in the context of a commercial activity with a view to economic advantage, namely to acquire new outlets.

153 Before considering the other complaints raised by Anheuser-Busch in the second part of its first plea and by OHIM in its first plea, concerning the period and territory that are relevant for the purpose of an assessment of the requirement for use in the course of trade, it is appropriate first to analyse the third part of Anheuser-Busch’s first plea and the first plea advanced by OHIM in so far as they concern the requirement that the sign be of more than mere local significance, another condition set out in Article 8(4) of Regulation No 40/94.

154 At paragraph 180 of the judgment under appeal, the General Court held, first, that it can be inferred from the actual wording of Article 8(4) of Regulation No 40/94 that the provision refers to the significance of the sign concerned and not to the significance of its use and, second, that the significance of the sign must be understood as the geographical extent of its protection, which must not be merely local.

156 Where the geographical extent of the protection of a sign is merely local, the sign must indeed be regarded as of mere local significance. However, it does not follow that the condition laid down in Article 8(4) of Regulation No 40/94 is met in every case simply because the sign in question is protected in a territory which cannot be regarded as merely local, in the present case because the territory of protection extends beyond the territory of origin.

157 The common purpose of the two conditions laid down in Article 8(4) of Regulation No 40/94 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 which actually have a real presence on their relevant market.

158 Accordingly, the significance of a sign cannot be a function of the mere geographical extent of its protection, since, if that were the case, a sign whose protection is not merely local could, by virtue of that fact alone, prevent registration of a Community trade mark – and could do so even though the sign is used only to a very limited extent in the course of trade.

159 It follows that, in order 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.

160 In order to ascertain whether that is the case, 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. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance.

161 Since, as has been stated at paragraph 159 of this judgment, it is necessary to examine the use of the sign concerned in the course of trade in a part – not merely local – of the territory of protection, the General Court also made an error of law – as is maintained both by Anheuser-Busch in the second part of its first plea and by OHIM in its first plea – in holding, at paragraph 167 of the judgment under appeal, that Article 8(4) of Regulation No 40/94 does not require that the sign concerned be used in the territory in which it is protected and that use in a territory other than that in which it is protected may suffice, even where there is no use at all in the territory of protection.

162 It is in fact only in the territory in which the sign is protected, whether the whole or only part of it is concerned, that the applicable law confers on the sign exclusive rights which may enter into conflict with a Community trade mark.

163 Furthermore, 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. The significance of the sign cannot therefore, in this case, be inferred from a cumulative assessment of the use of the sign in the two relevant territories, namely Austria so far as protection under the relevant bilateral treaties is concerned and France as regards protection under the Lisbon Agreement.

164 Similarly, as is argued by Anheuser-Busch and OHIM, in holding, at paragraph 169 of the judgment under appeal, that it had to be shown only that the sign concerned was used in the course of trade before publication of the trade mark application and not, at the latest, as at the date of that application, the General Court made a further error of law in its judgment.

165 In that regard, the judgment under appeal is at the very least inconsistent, since, at paragraph 169 thereof, the General Court referred, by analogy, to what is required for earlier trade marks relied on in support of an opposition, whilst, at paragraph 166 of that judgment, it rejected – and was correct in doing so, as stated at paragraph 142 of this judgment – an application by analogy of the requirement for genuine use imposed on earlier trade marks to earlier rights relied on under Article 8(4) of Regulation No 40/94.

166 Furthermore, it is necessary, as the Advocate General has stated at point 120 of his Opinion, to apply to the requirement for use in the course of trade of the sign relied on in opposition the same temporal condition as that expressly laid down in Article 8(4)(a) of Regulation No 40/94 with regard to acquisition of the right to the sign, that is to say, that of the date of application for registration of the Community trade mark.

167 In view, in particular, of the considerable period of time which may elapse between the filing of an application for registration and its publication, applying that temporal condition provides a better guarantee that the use claimed for the sign concerned is real and not an exercise whose sole aim has been to prevent registration of a new trade mark.

168 Furthermore, 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, 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.

169 It follows from the foregoing that, although Anheuser-Busch’s complaints relating to the concepts of genuine use, use in the course of trade and deliveries made without charge must be rejected, the second and third parts of its first plea and the first plea advanced by OHIM are well founded, since the judgment under appeal contains errors of law in its assessment of the conditions set out in Article 8(4) of Regulation No 40/94. The General Court 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.

Second plea in law, concerning infringement of Article 8(4) of Regulation No 40/94 in conjunction with Article 74(1) thereof

170 By its second plea in law, Anheuser-Busch alleges that the General Court infringed Article 8(4) in conjunction with Article 74(1) of Regulation No 40/94 by holding, at paragraph 199 of the judgment under appeal, that the Board of Appeal had made an error by not taking into account all the relevant elements of fact and law in determining whether the law of the Member State concerned, relied on pursuant to Article 8(4), conferred on Budvar the right to prohibit use of a subsequent mark.

171 Anheuser-Busch complains that the General Court infringed Article 74(1) of Regulation No 40/94 by holding, at paragraph 193 of the judgment under appeal, that the Board of Appeal had an obligation to acquaint itself, by whatever means it deemed necessary for that purpose, with the national law, including the case-law, of the Member State concerned, since that law may be regarded as a fact which is well known or likely to be known by anyone, and that, in addition to the evidence adduced in that regard by the parties, it should have informed itself through the parties, or by any other means, about the outcome of proceedings pending before the national courts.

172 In so holding, the General Court undermined the principle of equality of arms in opposition proceedings, inasmuch as the consequence of the position it adopted is that an applicant for a Community trade mark must, upon a mere allegation by the opponent relying on a national right pursuant to Article 8(4) of Regulation No 40/94, investigate the national law and case-law.

173 In particular, the judgment under appeal conflicts, in that regard, with the rule, set out in Article 74 of Regulation No 40/94, that the burden of proof lies with the opponent in opposition proceedings based on Article 8(4) of that regulation, including the burden of proving that the sign concerned confers on the opponent the right to prohibit the use of a subsequent mark.

174 In Anheuser-Busch’s submission, it follows from Article 74(1) of Regulation No 40/94 that, in opposition proceedings, OHIM’s examination is limited to the facts presented by the parties and that OHIM therefore does not examine the facts of its own motion.

175 National law, including case-law of the courts of the Member State concerned, in the present case case-law concerning whether a geographical indication may be legally protected, constitutes facts, as such facts cannot be qualified as well-known facts which OHIM has an obligation to investigate of its own motion.

176 Anheuser-Busch maintains that the General Court, at paragraph 195 of the judgment under appeal, established an incorrect standard for assessing whether the opponent has sufficiently demonstrated that the sign relied on confers on its proprietor the right to prohibit the use of a subsequent trade mark, namely proof of the abstract existence of provisions of national law that may form the basis for a right to prevent the use of a later sign.

177 In a situation such as that at issue here, the Board of Appeal was, according to Anheuser-Busch, competent to give a decision, on the basis of ample evidence presented by Anheuser-Busch showing that the sign concerned was not legally protected in France or in Austria and that, contrary to the principle that the burden of proof lies with the opponent, Budvar had not proved that it had the right to prohibit the use of a subsequent mark. Such a decision does not, moreover, ultimately prejudice the opponent, since it may still challenge the trade mark at the time of its registration in cancellation proceedings.

178 By its second plea, OHIM claims that the General Court infringed Article 74(1) of Regulation No 40/94. In that regard, paragraph 193 of the judgment under appeal contains an error of law.

179 OHIM submits that, in its case-law prior to the judgment under appeal, the General Court held that judgments of national courts are not ‘well-known facts’ which OHIM is entitled to examine of its own motion.

180 OHIM considers that, in the specific context of Article 8(4) of Regulation No 40/94, decisions of national courts are elements that may help to prove the ‘scope of protection of that right’ within the meaning of Rule 19(2)(d) of Regulation No 2868/95, proof which the opponent must adduce, in accordance with that rule.

181 At the very least, where the applicant for a Community trade mark provides (as Anheuser-Busch did) decisions of national courts showing that oppositions to a subsequent trade mark on the basis of rights relied on under Article 8(4) of Regulation No 40/94 have not been successful, it is then for the opponent to submit evidence in rebuttal showing that those decisions have been quashed in order to establish the actual extent of the protection afforded by those rights.

182 OHIM maintains that, in such a situation, the General Court could not require OHIM to examine that evidence of its own motion, as it did at paragraph 193 of the judgment under appeal, without upsetting the balance between the parties’ procedural rights and duties as established by Article 76(1) of Regulation No 40/94.

183 Budvar contends that the General Court did not infringe Articles 8(4) and 74(1) of Regulation No 40/94 by imposing an obligation on OHIM to acquaint itself, of its own motion, with the national law of the Member State concerned.

184 Such an obligation is reasonable and is also consistent with Article 76(1) of Regulation No 40/94, which enables OHIM to take certain measures relating to the giving or obtaining of evidence.

185 Budvar also submits that the analysis put forward by Anheuser-Busch in the context of its second plea is in fact linked to its first plea, according to which OHIM is competent to assess the validity of earlier rights relied on in opposition. On the same grounds as those put forward in response to the first plea, Budvar considers that the second plea must be rejected.

186 By their second plea in law, which concerns paragraphs 184 to 199 of the judgment under appeal, Anheuser-Busch and OHIM maintain that the General Court was wrong in holding that the Board of Appeal had made an error 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 Budvar the right to prohibit use of a subsequent trade mark.

187 That plea is directed in particular against paragraph 193 of the judgment under appeal, in so far as the General Court allegedly made an error there in holding that, in the present case, the Board of Appeal was required to acquaint itself of its own motion with the outcome of proceedings brought by Budvar before the Oberster Gerichtshof, the court of last instance in Austria, against a judgment whose consequence was that Budvar had not been able to prohibit use of a subsequent trade mark on the basis of the appellation ‘Bud’ as protected under the relevant bilateral treaties.

188 In that regard, it should be observed that Article 8(4)(b) of Regulation No 40/94 lays down the condition that, pursuant to the law of the Member State governing the sign relied on under Article 8(4), that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

189 Furthermore, in accordance with Article 74(1) of Regulation No 40/94, the burden of proving that that condition is met lies with the opponent before OHIM.

190 In that context and in relation to the earlier rights relied on in the present case, the General Court correctly held, at paragraph 187 of the judgment under appeal, that regard must be had, in particular, to the national rules advanced in support of the opposition and to the judicial decisions delivered in the Member State concerned and that, on that basis, the opponent must establish that the sign concerned falls within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited.

191 It follows that, contrary to Anheuser-Busch’s contention in its second plea, the General Court was correct in holding, at paragraph 195 of the judgment under appeal, that the opponent must establish only that he has available to him a right to prohibit use of a subsequent trade mark and that he cannot be required to establish that that right has been used, in other words that the opponent has actually been able to prohibit such use.

192 In that respect, the second plea put forward by Anheuser-Busch in support of its appeal is thus unfounded.

193 It also follows that the General Court was correct in holding at paragraph 195 of the judgment under appeal, 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 France showed that Budvar 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 Budvar 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.

194 That ground of the judgment under appeal was sufficient, on its own, for a finding that, in that respect, the contested decisions are – with regard to the earlier right concerned (protection under the Lisbon Agreement) – invalid.

195 Furthermore, at paragraph 192 of the judgment under appeal, the General Court stated that the Board of Appeal had referred solely to the judicial decisions delivered in France and Austria in order to conclude that Budvar had not provided evidence that the sign concerned conferred on it the right to prohibit use of a subsequent trade mark.

196 Noting that those decisions had not acquired the authority of res judicata, the General Court held, also at 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 Budvar in the opposition proceedings in order to assess whether, under those provisions, Budvar had the right to prohibit a subsequent trade mark on the basis of the sign it relied on.

197 On that point, the General Court was correct in finding that the contested decisions erred in law.

198 In that regard, it is to be noted that, as the General Court stated at paragraphs 192 and 193 of the judgment under appeal, although the Board of Appeal was aware of the fact that the judicial decisions referred to by Anheuser-Busch were not final, since they were subject to appeal before a higher national court, the Board of Appeal none the less relied exclusively on those decisions in concluding that the condition laid down in Article 8(4)(b) of Regulation No 40/94 was not met, on the ground, first, that the Austrian judgment was based on findings of fact which a court of last instance would be ‘unlikely’ to revisit and, second, that the French court’s judgment showed that Budvar ‘had not hitherto been able to prevent Anheuser-Busch’s distributor from selling beer in France under the BUD trade mark’.

199 It is thus apparent from the contested decisions that the Board of Appeal relied on reasons that were incorrect in deciding that Budvar had not established that the condition laid down in Article 8(4)(b) of Regulation No 40/94 was met.

200 With regard, first, to the decision handed down by a French court, it has already been stated, at paragraph 193 of this judgment, that the Board of Appeal’s reasoning was based on a requirement which does not derive from that provision and that as a result the contested decisions are unlawful.

201 With regard, second, to the decision handed down by an Austrian court, if the Board of Appeal had considered that decision to be insufficient to support a finding that the condition laid down in Article 8(4)(b) of Regulation No 40/94 was met, it should have noted that inadequacy and concluded from it that, since Budvar had not produced before OHIM the judgment of the Oberster Gerichtshof confirming that it did indeed have the right to prohibit the subsequent trade mark, Budvar had not proved that that condition was satisfied, contrary to what is required by Article 74(1) of Regulation No 40/94.

202 The fact remains, however, as the General Court stated at paragraphs 192 and 193 of the judgment under appeal, that the Board of Appeal proceeded in a wholly different way.

203 It is not in dispute that the Board of Appeal referred solely to the decision of the Austrian court referred to by Anheuser-Busch in concluding that Budvar did not have the right to prohibit use of the subsequent mark, on the ground that that decision was based on findings of fact which a court of last instance would be ‘unlikely’ to revisit.

204 However, just as the Board of Appeal could not, in this instance, substitute its own assessment of the validity of the earlier rights invoked under Article 8(4) of Regulation No 40/94 for that of the competent national courts (as has already been stated at paragraph 95 of this judgment), nor could the Board immediately discount the effect of any future judgment of the Oberster Gerichtshof concerning whether the condition laid down in Article 8(4)(b) of the regulation was met – and do so although Budvar had informed it that it had appealed to the Oberster Gerichtshof against the decision, any such effect having been discounted on the basis of the Board’s own assessment of the likelihood of that decision being subject to review.

205 Since it is established that, as has been stated at paragraph 96 of this judgment in the examination of Anheuser-Busch’s first plea (which is, as Budvar has rightly maintained, closely linked to its second plea), the earlier right claimed by Budvar under the relevant bilateral treaties with effect in Austria had not, at the date on which the Board of Appeal adopted the contested decisions, been declared invalid by a final judicial decision against which there was no appeal, the Board of Appeal could not rely exclusively on a judicial decision which was not yet final and against which an appeal had been lodged in order to conclude that Budvar did not have the right to prohibit use of the trade mark Bud on the basis of that earlier right.

206 The only conclusion which could be drawn from such a judicial decision was that the earlier right, although undoubtedly the subject of challenge, existed none the less.

207 Since that earlier right continued to exist, the question whether it conferred on the opponent the right to prohibit a subsequent trade mark under Article 8(4)(b) of Regulation No 40/94 should have prompted consideration of whether, as stated at paragraph 190 of this judgment, the opponent had established that the sign concerned fell within the scope of the law of the Member State relied on and whether it would allow use of a subsequent trade mark to be prohibited.

208 On that point, the General Court stated, at paragraph 192 of the judgment under appeal, that Budvar had relied before the Board of Appeal not only on the provisions of the relevant bilateral treaties but also on provisions of Austrian law which, in Budvar’s submission, could form a basis for its right to prohibit the subsequent trade mark Bud. However, the Board of Appeal did not – as the General Court also stated at paragraph 192 – take account of those provisions or refer to any matters serving to cast doubt on the applicability of those provisions in the present case.

209 Considerations such as those set out at paragraphs 192 and 195 of the judgment under appeal justify the conclusion reached by the General Court at paragraph 199 of the judgment under appeal, namely that the Board of Appeal made an error 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 confers on Budvar the right to prohibit use of a subsequent mark.

210 Accordingly, although it is the case that the General Court, at paragraph 193 of the judgment under appeal, added, in essence, that OHIM’s obligation to acquaint itself, of its own motion, with facts which are well known, including the domestic law of the Member State concerned, meant that it was ‘open’ to the Board of Appeal to inform itself through the parties, or by any other means, of the outcome of the proceedings brought before the Oberster Gerichtshof, that ground – even supposing that it entails a real obligation on the Board of Appeal to inform itself of its own motion about such proceedings and is thus wrong in law, as claimed by Anheuser-Busch and OHIM – is not capable of invalidating the General Court’s conclusion regarding the unlawfulness of the contested decisions in so far as they relate to the assessment of the condition laid down in Article 8(4)(b) of Regulation No 40/94.

211 It is settled case-law that complaints directed against grounds included in a judgment of the General Court purely for the sake of completeness cannot lead to the judgment being set aside and are therefore ineffective (see, in particular, Joined Cases C-189/02 P, C-202/02 P, C-205/02 P to C-208/02 P and C-213/02 P Dansk Rørindustri and Others v Commission [2005] ECR I-5425, paragraph 148).

212 The question whether the Board of Appeal was obliged or entitled to inform itself of its own motion of the outcome of the judicial proceedings in question was examined by the General Court for the sake of completeness, since, in the present case, as has been observed at paragraph 204 of this judgment, it stated that the Board of Appeal had held, on the basis of its own assessment of the likelihood of the judicial decision in question being reviewed, that it was not necessary for it to inform itself of that outcome and that it had available all the information necessary to determine whether the condition laid down in Article 8(4)(b) of Regulation No 40/94 was met and to conclude, in this instance, that that was not the case.

213 Accordingly, the second plea in law put forward by Anheuser-Busch and OHIM, in so far as it concerns paragraph 193 of the judgment under appeal, is directed against a ground included in that judgment for the sake of completeness and accordingly, even supposing the plea to be well founded, it is not such as to lead to the judgment being set aside.

214 Consequently, the second plea in law put forward by Anheuser-Busch in support of its appeal must be rejected as, in part, unfounded and, in part, ineffective.

215 In those circumstances, the judgment under appeal must be set aside in so far as the General Court, with regard to the interpretation of Article 8(4) of 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.

216 Under the first paragraph of Article 61 of the Statute of the Court of Justice of the European Union, if the appeal is well founded, the Court of Justice may itself give final judgment in the matter, where the state of the proceedings so permits, or refer the case back to the General Court for judgment.

217 In this case, the General Court upheld the complaint, forming part of the second limb of Budvar’s single plea in law, by which Budvar challenged the way in which the Board of Appeal had applied 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.

218 It has been found at paragraph 215 of this judgment that, with regard to the way in which that condition was applied, the judgment under appeal contains three errors of law.

219 In order to evaluate Budvar’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 Budvar that are mentioned at paragraphs 171 and 172 of the judgment under appeal.

220 It follows that the state of the proceedings does not permit the Court of Justice to give final judgment, with the result that Budvar’s action must be referred back to the General Court for judgment on that plea.

221 Since the cases are being referred back to the General Court, it is appropriate to reserve the costs relating to the present appeal proceedings.

1. Sets aside the judgment of the Court of First Instance of the European Communities 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) in so far as the Court, with regard to the interpretation of Article 8(4) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, as amended by Council Regulation (EC) No 422/2004 of 19 February 2004, 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;

3. Refers Joined Cases T-225/06, T-255/06, T-257/06 and T-309/06 back to the General Court of the European Union;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Anheuser-Busch v Budejovicky Budvar (Intellectual property) [2011] EUECJ C-96/09 (29 March 2011) URL: http://www.bailii.org/eu/cases/EUECJ/2011/C9609.html Cite as: EU:C:2011:189, ECLI:EU:C:2011:189, [2011] ECR I-2131, [2011] EUECJ C-96/09, [2011] EUECJ C-96/9

Court of Justice of the European Communities (including Court of First Instance Decisions)