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Thursday, 18 August 2005


Yet more BUDWEISER litigation, this time before OHIM.

Anheuser-Busch applied to register BUDWEISER as a word mark for beers in Class 32 and alcoholic beverages in Class 33 before OHIM. Budejovicky Budvar opposed the application, based on its earlier BUDWEISER BUDVAR international figurative marks which had effect in Germany, Italy, Austria and the Benelux, arguing that the applied-for mark was barred from registration under Art.8(1)(a), (b) and (4) of the CTMR. The Opposition Division found that there was a likelihood of confusion and hence that the BUDWEISER mark was barred from registration. In the interests of procedural economy, the consideration of whether there was a likelihood of confusion was based solely on Budvar’s International Registration 674 530 as it affected France and Austria. Anheuser-Busch appealed. Amongst the issues raised by the parties was the existence and effect on the comparison of signs of the geographical meaning of BUDWEISER.

The Second Board of Appeal dismissed the appeal, finding:

*Likelihood of confusion was to be judged on the part of the French and Austrian public and between the CTM and Budvar’s 674 50 mark.

*Budweiser’s beer, as applied for, was identical to the beer for which Budvar’s mark was protected. Also, Budweiser’s alcoholic beverages were very similar to beer since both types of beverage were consumed with a common motive and were available from the same distribution outlets. Additionally, certain alcoholic beverages, such as cider, are similar to beer and there was said to be a trend towards pre-prepared drinks consisting of beers mixed with spirits.

*There was a high degree of visual similarity between the two signs. Although Budvar’s mark was figurative, its main component was verbal and the word BUDWEISER was the most eye-catching element of the mark. Phonetically the marks were similar since Budvar’s mark was likely to get abbreviated to BUDWEISER or the BUDVAR element of the mark may not be heard by the bartender in a crowded bar. The conceptual content of the two marks did not have much bearing on the analysis since some consumers would think of the Czech city of Budweis on seeing the BUDWEISER mark, others would think of beer brewed in the city and still others would be aware of the ongoing dispute between the Czech and American companies and would think that the mark referred to beer made by either of the two parties.

*As a result of these findings the use of the two trade marks on identical or similar goods was likely to lead to confusion by a significant number of consumers.

OHIM gave next to no consideration to the ongoing legal battle between the Czech and American companies. The IPKat reckons that while in this case the Czech company managed to block the US company from obtaining a CTM, the US company could just as easily rely on its rights in jurisdictions where it has been found to be entitled to the rights in the BUDWEISER mark in order to block a CTM application by the Czech company. Thus, conflicting decisions in Member States should block either company from getting the unitary CTM right.

The IPKat notes that this decision concerns application by Anheuser-Busch made on 11 April 2000. In parallel proceedings before OHIM, the Opposition Division’s decision to allow the opposition with respect to the BUDWEISER mark applied for on 1 April 1996 has been annulled and remitted to the Opposition Division on the ground that International Registration 674 530 was only protected in France and Austria from 19 May 1997. All is not necessarily lost for the Czech company in the second case though, since the Czech company also based its opposition on two other marks which weren’t considered in the Opposition Division decision in the interests of procedural economy, but could presumably be resurrected in the second round of Opposition Division proceedings.


John H said...

Like the factions in Northern Ireland, you really feel there has to be a better solution to all this, a way these two companies can learn to co-exist. I mean, this country-by-country, mark-by-mark, jurisdiction-by-jurisdiction skirmishing surely isn't helping either combatant?

Paul G said...

Is public awareness of ongoing litigation between the holders of the respective marks a factor that goes against a positive likelihood of confusion holding? If not, it should be.

Ilanah said...

It was said to be a neutral factor because while some consumers knew about the litigation, others thought it would refer to beer brewed in Budweis and still others would think it referred to either party's beer (is there a suggestion here that Budweiser is a style of beer?). I think the idea behind this was that the different consumer perceptions would cancel each other out. I agree though, the reasoning does seem a bit dodgy.

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