Trademarks

• Author: International Law Group

This case is one of dozens between the Czech brewery, Budejovicky Budvar (hereinafter Budvar), and the U.S. brewery Anheuser-Busch Ltd. (ABL) over the use of the names "Budweiser," "Bud" and "Budvar," since Budvar's first exports to the U.S. in 1906. On November 16, 2004, the European Court of Justice (ECJ) handed down its advisory opinion of EU law referred to it by the Finnish Supreme Court pursuant to EC 234.

The referral arose out of a 1996 Finnish action brought by ABL to prevent Budvar from marketing its beer in Finland under names such as "Budweiser." In 1962 and 1972, Budvar had registered its trade marks Budvar and Budweiser Budvar in Finland. Budvar registered its trade name during 1967 in the Czechoslovakian commercial register. In 1984, however, a Finnish court had forfeited the marks for lack of use in that country.

Between 1985 and 1992, ABL registered several of its marks in Finland, such as "Budweiser," "Bud," and "Budweiser King of Beers." In 1996, it filed a suit in the Helsinki District Court (Helsingin käräjäoikeus) to prevent Budvar from using names and signs similar to Budweiser because they could be confusing for consumers.

In 1998, the Finnish District Court decided that Budvar's bottle labels differed so substantially from ABL's labels that consumers were unlikely to confuse the two products. It also held that the inscription "Brewed and bottled by the Brewery Budweiser Budvar national enterprise" on the labels was not a mark but merely informed the public of the brewery's business name. Two years later, the Helsinki Court of Appeals (Helsingin hovioikeus) decided that the evidence was not enough to prove that Finnish beer- drinkers were familiar with the English version of Budvar's marks before ABL's registrations. Both parties appealed to the Supreme Court of Finland.

That Court in turn sought the ECJ's interpretation (1) of the 1989 European Directive 89/104/EEC to harmonize the laws of the Member States relating to trademarks [1989 O.J. of the European Communities (L 40) 1], and (2) of Article 16 of the WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) on the scope of the rights conferred by trade marks under EU law. The questions posed by the Finnish Supreme Court included: (1) If the conflict between a trade mark and an allegedly infringing sign occurred before the entry into force of the TRIPs Agreement but continues thereafter, does the TRIPs Agreement apply to the question of...