On 16 November 2004, the European Court of Justice (ECJ) gave its judgment in Anheuser-Busch v Budejovický Budvar, case C-245/02.
Anheuser-Busch is the proprietor in Finland of the trade mark Budweiser, which it first applied for in 1980. Budvar registered its trade name in the Czechoslovakian commercial register in 1967. It was registered in Czech (‘Budejovický Budvar, národní podnik'), English (‘Budweiser Budvar, National Corporation') and French (‘Budweiser Budvar, Entreprise nationale').
Anheuser-Busch brought an action before the Finnish Court to prohibit Budvar from use in Finland of the trade marks Budejovický Budvar, Budweiser Budvar, Budweiser, Budweis, Budvar, Bud and Budweiser Budbraü as signs for the marketing and sale of beer produced by Budvar. Anheuser-Busch argued that the trade name and signs used by Budvar could be confused with its trade marks since those signs and trade marks designate identical or similar types of goods.
Budvar denied trade mark infringement and contended that the signs it used in Finland could not be confused with Anheuser-Busch’s trade marks. It also submitted that, with respect to the sign ‘Budweiser Budvar’, the registration of its trade name in Czech, English and French conferred on it, pursuant to Article 8 of the Paris Convention (which provides that a trade name shall be protected without the obligation of filing or registration, whether or not it forms part of a trade mark ), a right in Finland earlier than that conferred by Anheuser-Busch’s trade marks and that their earlier right was therefore protected under that article.
After several hearings, the case reached the Finnish Supreme Court which referred several questions to the ECJ.
The first question was whether the World Trade Organization's Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) applies to a conflict between a trade mark and a sign where the conflict arose before the date of application of TRIPS but continued beyond that date. The ECJ’s answer was that since the conflict had continued after the application date of TRIP S, that agreement applied to the conflict.
Secondly, the Finnish Supreme Court asked whether, and if so under what conditions, a trade name could be regarded as a sign for the purposes of the first sentence of Article 16(1) of TRIPS with the result that, the proprietor of a trade mark has an exclusive right to prevent all third parties from using that trade mark without his consent. The ECJ found that a trade name may constitute a sign within the meaning of the first sentence of Article 16(1) TRIPS. According to the ECJ case law, that provision enables a trade mark owner to exercise its exclusive right in cases in which a third party's use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential function of guaranteeing the origin of the goods to consumers. It is up to the national court to establish whether that condition is fulfilled.
The Finnish Supreme Court's third question was whether, and under what conditions, a trade name which is not registered or established by use in the State in which the trade mark is registered may be regarded as an existing prior right within the meaning of the third sentence of Article 16(1) of TRIPS ("The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use"), having regard in particular to that Member State's obligations to protect the trade name under Article 8 of the Paris Convention and Article 2(1) of TRIPS. The ECJ held that an unregistered trade name may be regarded as a prior right if its proprietor has a right falling within the substantive and temporal scope of TRIPS which arose prior to the trade mark, and which entitles him to use a sign identical or similar to that mark.
Both Anheuser-Busch and Budvar are claiming victory with this ECJ decision. The final decision of the Finnish Supreme Court, will determine the true outcome.
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