# C_2009113EN.01002601.xml

| 16.5.2009 | EN | Official Journal of the European Union | C 113/26 |
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16.5.2009

EN

Official Journal of the European Union

C 113/26

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Appeal brought on 10 March 2009 by Anheuser-Busch, Inc. against the judgment of the Court of First Instance (First Chamber) delivered on 16 December 2008 in Joined Cases T-225/06, T-255/06, T-257/06 and T-309/06: Budějovický Budvar, národní podnik v Office for Harmonisation in the Internal Market (Trade Marks and Designs), Anheuser-Busch, Inc

(Case C-96/09 P)

2009/C 113/49

Language of the case: English

Parties

Parties

Appellant: Anheuser-Busch, Inc. (represented by: V. von Bomhard, Rechtsanwältin, B. Goebel, Rechtsanwalt)

Appellant:

Other parties to the proceedings: Budějovický Budvar, národní podnik, Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Other parties to the proceedings:

Form of order sought

Form of order sought

The appellant claims that the Court should:

| 1. | set 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 with the exception of the order numbered 1, |
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1.

set 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 with the exception of the order numbered 1,

| 2. | give final judgment on the dispute by rejecting the order sought at first instance or, in the alternative, remit the case to the Court of First Instance and |
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2.

give final judgment on the dispute by rejecting the order sought at first instance or, in the alternative, remit the case to the Court of First Instance and

| 3. | order that the costs of the proceedings be borne by the applicant at first instance. |
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3.

order that the costs of the proceedings be borne by the applicant at first instance.

Pleas in law and main arguments

Pleas in law and main arguments

The appellant submits that

| 1. | The Court of First Instance erred in law when effectively denying the competence of the Office to determine that Budvar had failed to meet its burden of establishing rights under Art. 8(4) (1) when there were serious doubts as to the validity of these rights (alleged appellations of origin for ‘BUD’). |
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1.

The Court of First Instance erred in law when effectively denying the competence of the Office to determine that Budvar had failed to meet its burden of establishing rights under Art. 8(4) (1) when there were serious doubts as to the validity of these rights (alleged appellations of origin for ‘BUD’).

1

| 2. | The Court of First Instance misconstrued the qualitative and quantitative requirements of the Community law requirement of ‘use in the course of trade’ under Article 8(4). First, it held that this requirement was to be interpreted as meaning any commercial use outside the merely private sphere, holding in particular that it was not required to genuinely use the alleged Article 8(4) right as would be the case with trade marks. In this context, it allowed for ‘free of charge’ shipments to be considered ‘use in the course of trade’ as well as use in a different function (trade mark use rather than appellation of origin use). Second, the contested decision erroneously allowed for use after the application date of the opposed trade mark to be taken into account and thereby disregarded that for a prior right to be suitable as a ground of opposition under Article 8, all conditions for this ground of opposition must be present at the time of filing of the opposed application. Third, the Court misconstrued Article 8(4) by holding that, in deviation from the principle of territoriality; use could be taken into account that had occurred in countries other than the countries where the alleged Article 8(4) rights exist. |
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2.

The Court of First Instance misconstrued the qualitative and quantitative requirements of the Community law requirement of ‘use in the course of trade’ under Article 8(4). First, it held that this requirement was to be interpreted as meaning any commercial use outside the merely private sphere, holding in particular that it was not required to genuinely use the alleged Article 8(4) right as would be the case with trade marks. In this context, it allowed for ‘free of charge’ shipments to be considered ‘use in the course of trade’ as well as use in a different function (trade mark use rather than appellation of origin use). Second, the contested decision erroneously allowed for use after the application date of the opposed trade mark to be taken into account and thereby disregarded that for a prior right to be suitable as a ground of opposition under Article 8, all conditions for this ground of opposition must be present at the time of filing of the opposed application. Third, the Court misconstrued Article 8(4) by holding that, in deviation from the principle of territoriality; use could be taken into account that had occurred in countries other than the countries where the alleged Article 8(4) rights exist.

| 3. | The Court of First Instance also misconstrued the requirement ‘of more than mere local significance’. It essentially found this requirement to be met by the fact that the alleged
  Article 8(4) right originated from a third country and was extended into two member states of the European Union. It did not ask whether the right at issue had gained more than mere local significance in the two actual member states for which it was claimed, thereby opening the door to Article 8(4) rights from outside the European Union. |
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3.

The Court of First Instance also misconstrued the requirement ‘of more than mere local significance’. It essentially found this requirement to be met by the fact that the alleged

Article 8(4) right originated from a third country and was extended into two member states of the European Union. It did not ask whether the right at issue had gained more than mere local significance in the two actual member states for which it was claimed, thereby opening the door to Article 8(4) rights from outside the European Union.

| 4. | The second ground of appeal is a violation of Article 8(4)(b) together with Article 74(1). Article 8(4)(b) requires that the national right entitles Budvar to prohibit the use of the opposed trade mark. The Board of Appeal had determined, based on the evidence submitted by the parties and applying the established rule that the burden of proof in OHIM opposition proceedings is on the opponent, that Budvar had not proved that it was able, under the national law applying in either France or Austria, to prohibit the use of the trade mark ‘BUD’. The Court of First Instance, however, held contrary to Article 74(1) and Article 8(4)(b) that OHIM should of its own motion investigate the law and legal developments supporting the alleged Article 8(4) rights beyond the submissions of the parties, rather than dismissing the opposition for lack of proof of Budvar's alleged rights. |
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4.

The second ground of appeal is a violation of Article 8(4)(b) together with Article 74(1). Article 8(4)(b) requires that the national right entitles Budvar to prohibit the use of the opposed trade mark. The Board of Appeal had determined, based on the evidence submitted by the parties and applying the established rule that the burden of proof in OHIM opposition proceedings is on the opponent, that Budvar had not proved that it was able, under the national law applying in either France or Austria, to prohibit the use of the trade mark ‘BUD’. The Court of First Instance, however, held contrary to Article 74(1) and Article 8(4)(b) that OHIM should of its own motion investigate the law and legal developments supporting the alleged Article 8(4) rights beyond the submissions of the parties, rather than dismissing the opposition for lack of proof of Budvar's alleged rights.

| 5. | Altogether, the contested judgment of the Court of First Instance has given an interpretation to Article 8(4) which is difficult to reconcile with the wording of this provision and impossible to reconcile with the objective of Regulation No. 40/94 to create a well functioning Community wide uniform trade mark right in order to foster intra-Community trade. |
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5.

Altogether, the contested judgment of the Court of First Instance has given an interpretation to Article 8(4) which is difficult to reconcile with the wording of this provision and impossible to reconcile with the objective of Regulation No. 40/94 to create a well functioning Community wide uniform trade mark right in order to foster intra-Community trade.

| 6. | Each of these violations of the law by the Court of First Instance led to the annulment of the decisions of the Second Board of Appeal, and is therefore — each separately — reason to set aside the contested judgment. |
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6.

Each of these violations of the law by the Court of First Instance led to the annulment of the decisions of the Second Board of Appeal, and is therefore — each separately — reason to set aside the contested judgment.

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(1)  Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark OJ L 11, 14.1.1994, p. 1

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