Judgments nº T-55/04 of Court of First Instance of the European Communities, June 12, 2007

• Resolution Date: June 12, 2007
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-55/04

In Joined Cases T-53/04 to T-56/04, T-58/04 and T-59/04,

Bud-jovický Budvar, národní podnik, established in -eské Bud-jovice (Czech Republic), represented by F. Fajgenbaum, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral and I. de Medrano Caballero, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being

Anheuser-Busch, Inc., established in Saint Louis, Missouri (United States), represented initially by V. von Bomhard, A. Renck, A. Pohlmann, D. Ohlgart and B. Goebel, and subsequently by V. von Bomhard, A. Renck, D. Ohlgart and B. Goebel, lawyers,

ACTION for annulment of six decisions of the Second Board of Appeal of OHIM of 3 December 2003 (Cases R 820/2001-2, R 822/2001-2, R 823/2001-2, R 921/2001-2, R 29/2002-2 and R 32/2002-2), concerning opposition proceedings between Bud-jovický Budvar, národní podnik and Anheuser-Busch, Inc.,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fifth Chamber, Extended Composition),

composed of M. Vilaras, President, M.E. Martins Ribeiro, F. Dehousse, D. -váby and K. Jürimäe, Judges,

Registrar: I. Natsinas, Administrator,

having regard to the applications lodged at the Registry of the Court of First Instance on 9 February (Case T-53/04) and 10 February 2004 (Cases T-54/04 to T-56/04, T-58/04 and T-59/04),

having regard to the Order of the President of the Fifth Chamber of the Court of First Instance of 24 February 2005 joining the present cases for the purposes of the written procedure, the oral procedure and the judgment, pursuant to Article 50 of the Rules of Procedure of the Court of First Instance,

having regard to the responses of OHIM lodged at the Court Registry on 11 August (Cases T-53/04 to T-56/04) and 16 August 2004 (Cases T-58/04 and T-59/04),

having regard to the responses of the intervener lodged at the Court Registry on 11 August (Cases T-53/04 to T-56/04) and 16 August 2004 (Cases T-58/04 and T-59/04),

having regard to the referral of the present cases to the Fifth Chamber, Extended Composition, of the Court of First Instance,

further to the hearing on 13 October 2005,

gives the following

Judgment

Legal framework

A - International law

1 Articles 1 to 5 of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (-the Lisbon Agreement-), adopted on 31 October 1958, revised at Stockholm on 14 July 1967 and amended on 28 September 1979, provide as follows:

-Article 1

(1) The countries to which this Agreement applies constitute a Special Union within the framework of the Union for the Protection of Industrial Property.

(2) They undertake to protect on their territories, in accordance with the terms of this Agreement, the appellations of origin of products of the other countries of the Special Union, recognised and protected as such in the country of origin and registered at the International Bureau of Intellectual Property - referred to in the Convention establishing the World Intellectual Property Organisation -

Article 2

(1) In this Agreement, -appellation of origin- means the geographical name of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors.

(2) The country of origin is the country whose name, or the country in which is situated the region or locality whose name, constitutes the appellation of origin which has given the product its reputation.

Article 3

Protection shall be ensured against any usurpation or imitation, even if the true origin of the product is indicated or if the appellation is used in translated form or accompanied by terms such as -kind-, -type-, -make-, -imitation-, or the like.

Article 4

The provisions of this Agreement shall in no way exclude the protection already granted to appellations of origin in each of the countries of the Special Union by virtue of other international instruments, such as the Paris Convention of March 20, 1883, for the Protection of Industrial Property and its subsequent revisions, and the Madrid Agreement of April 14, 1891, for the Repression of False or Deceptive Indications of Source on Goods and its subsequent revisions, or by virtue of national legislation or court decisions.

Article 5

(1) The registration of appellations of origin shall be effected at the International Bureau, at the request of the Offices of the countries of the Special Union, in the name of any natural persons or legal entities, public or private, having, according to their national legislation, a right to use such appellations.

(2) The International Bureau shall, without delay, notify the Offices of the various countries of the Special Union of such registrations, and shall publish them in a periodical.

(3) The Office of any country may declare that it cannot ensure the protection of an appellation of origin whose registration has been notified to it, but only in so far as its declaration is notified to the International Bureau, together with an indication of the grounds therefor, within a period of one year from the receipt of the notification of registration, and provided that such declaration is not detrimental, in the country concerned, to the other forms of protection of the appellation which the owner thereof may be entitled to claim under Article 4, above.

--

2 Rules 9 and 16 of the Regulations Under the Lisbon Agreement, as in force on 1 April 2002, provide as follows:

-Rule 9

Declaration of Refusal

(1) A declaration of refusal shall be notified to the International Bureau by the competent authority of the contracting country for which the refusal is issued and shall be signed by that authority.

-

Rule 16

Invalidation

(1) Where the effects of an international registration are invalidated in a contracting country and the invalidation is no longer subject to appeal, the invalidation shall be notified to the International Bureau by the competent authority of that contracting country. --

B - Community law

3 Article 8(4) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended and as applicable at the material time, reads as follows:

-Article 8

Relative grounds for refusal

-

4. Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the law of the Member State governing that sign:

   (a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;

   (b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

   --

   C - National law

   4 Article L. 641-2 of the French Code rural (-the Rural Code-), as applicable at the material time, provides:

   -Agricultural or food products, raw or processed, may be given an exclusive, controlled appellation of origin. The provisions of Articles L. 115-2 to L. 115-4 and L. 115-8 to L. 115-15 of the Code de la consommation shall not apply to them.

   Subject to the conditions set out below, those products may be given a controlled appellation of origin if they fulfil the requirements of Article L. 115-1 of the Code de la consommation, have a duly established reputation and are the subject of procedures for approval.

   A controlled appellation of origin may never be considered as generic in nature and fall into the public domain.

   The geographical name which constitutes an appellation of origin, or any other reference suggesting it, may not be used for any similar product, without prejudice to the legislative provisions or regulations in force on 6 July 1990, or for any other product or service if that use is likely to misappropriate or weaken the reputation of the appellation of origin.

   The appellations of origin for higher-quality wines referred to in Article L. 641-24 and those which are in force on 1 July 1990 in the overseas departments retain their status.-

   5 Article L. 115-5 of the French Code de la consommation (-the Consumer Code-), as applicable at the material time, provides:

   -The procedure for allocating a controlled appellation of origin is laid down in Article L. 641-2 of the Rural Code, reproduced below --

   6 Articles L. 711-3 and L. 711-4 of the French Code de la propriété intellectuelle (-the Intellectual Property Code-), as applicable at the material time, read as follows:

   -Article L. 711-3

   The following signs may not be adopted as a trade mark or element of a trade mark:

   (a) those which are excluded by Article 6ter of the Paris Convention of March 20, 1883, as revised, for the Protection of Industrial Property or by Article 23(2) of Annex I C to the Agreement Establishing the World Trade Organisation;

   (b) those which are contrary to public policy or to accepted principles of morality, or the use of which is prohibited by law;

   (c) those which are likely to deceive the public, in particular as to the nature, quality or geographical origin of the goods or service.

   Article L. 711-4

   A sign may not be adopted as a trade mark if it interferes with prior rights, in particular:

   (a) an earlier registered or well-known mark within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property;

   (b) a business name or corporate name, if there is a likelihood of confusion on the part of the public;

   (c) a commercial name or sign known throughout the national territory, if there is a likelihood of confusion on the part of the public;

   (d) a protected appellation of origin;

   (e) copyright;

   (f) rights resulting from a...