15 avr. 2011

ECJ closes trademark resale industry

Grand Chamber of 13 judges of the ECJ set aside the General Court judgment in case Anheuser-Busch Inc., C-96/09 P, in holding that the fact that a company has registered a trademark (“BUD”) in a number of States is not sufficient for prohibiting another company to use the same trademark. The holder of a previously registered trademark must prove its genuine use under two criteria:

1) duration, and
2) intensity

vis-à-vis consumers, suppliers and competitors (§ 160).

This judgment on appeal closes the business of companies that were registering trademarks with an intention to take money from other companies wishing to use it in practice, i.e. to put this trademark on a real article of trade. This decision also urges the trademark holders to extend their business continuously in order not to loose their right to a trademark.

The loosing party is a Czech beer producer, Budvar, that had the respective rights to “BUD” in Austria, Belgium, Netherlands, Luxembourg, France, Italy and Portugal (§§ 21-22).

The 4 instances (Opposition and the Appeal Boards of the OHIM, General Court, ECJ) already took 12 years of litigation. The case is sent back to the EU General Court.

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