Anheuser-Busch Inc. v Budějovický Budvar, národní podnik.
Date: 2011-03-29
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.
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.
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.
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.
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.
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.
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).