Trademarks

• Author: International Law Group

Budejovicky, Budvar, narodni podnik (Budvar or plaintiff), is a brewery headquartered in the town of Ceske Budejovice in the Czech Republic. Budvar markets beer, specifically under the names "Budejovicky," "Budvar," and "Budweiser Budvar," the last of which it exports to nearby Austria.

Rudolf Ammersin GmbH (Ammersin or defendant) is a company established in Vienna, Austria. Ammersin markets, inter alia, an imported beer called "American Bud." Anheuser - Busch, Inc. (ABI), located in the United States, produces this beer. Ammersin buys American Bud from Josef Sigl KG (Josef Sigl), a company established in Obertrum (Austria), and is the sole Austrian importer of that beer. In July 1999, plaintiff filed proceedings in the Handelsgericht Wien (Commercial Court, Vienna) seeking to enjoin defendant from buying and selling ABI's beer within Austria under the "American Bud" name.

Two main theories underlay the plaintiff's case in the Austrian court. First, plaintiff contended that the name "American Bud," ABI's registered Austrian trade mark, bears enough of a likeness to its three Austrian trade marks to cause confusion under Austrian unfair competition laws.

Second, plaintiff claimed that the use of the designation "American Bud" for a beer from a State other than the Czech Republic conflicts with the 1976 Czech-Austria Bilateral Convention between (then) Czechoslovakia and Austria. According to Article 6 of the Convention, the term "Bud" is a protected designation in Austria set aside only for Czech beers.

On May 25, 2002, the European Court of Justice received a reference from the Handelsgericht pursuant to Article 234 EC (ex Article 177). The Austrian court sought a preliminary legal ruling on several questions dealing with the interpretation of Articles 28 EC, 30 EC and 307 EC and the 1992 Council Regulation (EEC) No. 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs as amended by Council Regulation (EC) No 535/97 of 17 March 1997 (collectively, Regulation No. 2081/92).

As of January 1, 1993, the former Czechoslovakia split into two states: the Czech Republic and Slovakia. As to the impact of international law on the continued applicability of the Bilateral Convention as between Austria and the new Czech Republic, Article 34(1) of the 1978 Vienna Convention on Succession of States in respect of Treaties [17 I.L.M. 1488] is relevant. It provides in part that: "When a part...