"BUD" WARS - CFI overturn Board of Appeal's decision dismissing Budvar's "appellation of origin" opposition

In Budejovicky Budvar v OHIM, the CFI upheld an appeal by Budejovicky Budvar from the Boards of Appeal whereby the latter rejected an opposition to Anheuser-Busch's "Bud" applications based on Budejovicky Budvar's "appellation of origin" for "Bud". The opposition was based on Art.8(4) which permits opponents to rely upon non-registered trade mark rights if the laws of Member States permit the prevention of use of the trade mark in that Member State. Budvar relied upon various Member States' law which protected appellations of origin. The Boards of Appeal rejected the opposition on the basis that "Bud" was not, in fact, an appellation of origin (being no more than derived from Budweiser, the German name for the Czech town where Budvar beer was brewed). The CFI upheld the appeal on the basis that it was not open to the Boards of Appeal to consider whether the appellation was in fact, in truth,  an appellation of origin but rather whether under the law of the Member State, its use was liable to be prevented. The decision is important on a number of fronts

• "more than mere local significance" in Art.8(4) is concerned with the significance of the territory protected by the sign and not the significance of the extent of use of that sign.
• the requirement of use of the sign under Art.8(4) is not analogous to the requirements of proof of "genuine use" for registered marks relied upon in oppositions.
• it is not necessary that the sign be used in the territory of the Member State which gives rise to the right under Art.8(4).
• the earlier sign may be used within the meaning of Art.8(4) if used at any time up to the date of publication of the application for a CTM which is opposed.

The decision is helpful as to what will constitute "use" of a sign under Art.8(4). The CFI said that the opposing party "need do no more than show that the sign concerned was used in the context of a commercial activity with a view to economic advantage" (i.e. used in the course of trade). Thus, the threshold is very low. The real evidential task is for an opponent to prove cogently that the law of a particular Member State provides for a remedy to prevent use of a trade mark and that the Opponent provides factual evidence to show that it satisfies the conditions for that remedy. This will normally involve the provision of evidence from a legal expert (professor or practitioner) as well as factual evidence. In comparison, the "use " condition appears to require little more than demonstrating de minimis degree of external use in the European Community.