In Anheuser Busch v. OHIM (Office for Harmonisation in the Internal Market (Trade Marks and Designs)), the European Union’s Court of First Instance upheld a March 2007 decision of the OHIM Board of Appeal that had allowed an opposition by Budějovický Budvar, národní podnik (Budvar)a Czech brewery that markets beer in Europe under the name “Budweiser”, to Anheuser Busch’s attempt to register in the EU the “Budweiser” trademark it holds and uses in North America. The Court held that the evidence of Budvar’s existing mark could be considered despite its late submission to the Board, and that there was sufficient evidence of its use to make Anheuser Busch’s mark unregistrable.

This proceeding has had a long and convoluted history: since Anheuser Busch first applied for its Budweiser mark in 1996, two decisions of OHIM’s Opposition Division have gone against it, citing confusion with various word and figurative marks already held by Budvar in EU countries – the first of these was reversed on appeal to the OHIM Board of Appeal, but the second was upheld, and subsequently appealed by Anheuser to the Court of First Instance.

Anheuser had specifically applied for a word-mark “Budweiser”, for the wares‘beer, ale, porter, malted alcoholic and non‑alcoholic beverages’.In its opposition filing, Budvar had relied upon its ownership of three international trademarks registered in EU countries (specifically, registration numbers 238203,(a word-mark) 674530, and 614536 (figurative marks)) as bases for confusion with the mark Anheuser Busch had applied for. Budvar had submitted evidence of use for these marks to OHIM on 27th February 2002, 44 minutes after the relevant deadline, and had further submitted evidence of the renewal of mark 238203 on 21 January 2004, nearly two years after the relevant deadline. The first Opposition Division ruling, of June 2004, was overturned because mark 674530 had actually come into force in the relevant countries after Anheuser’s application, whereas the second, of December 2005, focused on mark 614536 and again found confusion, the Division having found that insufficient evidence of use had been submitted for mark 238203. On the second appeal, the Board held that mark 238203, which was identical to the mark sought by Budweiser, could be considered, and sufficient evidence of its use had been shown for it to ground a finding of confusion. Anheuser did not contest the finding with respect to mark 614536.

European Council Regulation 40/94, a governing law for the EU trademark, states at article 43 that, if a trademark applicant so asks, the opposer can be required to furnish proof of “genuine use”, within the five years prior to the application, of the mark that is grounding their opposition. On appeal, the Court of First Instance considered the sufficiency of this evidence as supplied by Budvar. The court found, citing Rule 22 of Commission Regulation 2668/95, that this proof must relate to the place, time, extent, and nature of the mark’s use. Further, the Court found in case law that the use attested to must be “public and external” in accordance with the goal of guaranteeing the identity and source of sold goods, and extensive enough to create or preserve a market for those goods. In the instant case, the evidence submitted to this end by Budvar comprised various advertisements for Budvar’s Budweiser beer from Germany and Austria submitted at various times, along with invoices for beer sold under that name that were submitted to OHIM as part of the main body of use evidence on 27 February 2002. While Anheuser did not dispute that the place, time, and nature of the use were attested to by the advertisements, they argued that the invoices that spoke to extent of use should have been dismissed as evidence due to their late submission, and thus that the opposition should be dismissed.

Article 74(2) of Council Regulation 40/94 states that “The Office may disregard facts or evidence which are not submitted in due time by the parties concerned.” Citing the European Court of Justice ruling inOHIM v. Kaul , the Court found that, in deciding whether or not to disregard such evidence, OHIM can consider whether such evidence is likely to be relevant to the outcome, and whether the proceedings are at a stage, or circumstances are otherwise so, as to not argue against a late submission being taken into account. The Court thus held that, since the evidence of use and extent of use were relevant to the outcome as a vital underpinning of part of the test for genuine use, the time frame of their receipt being over two years before the second Opposition Division ruling suggested that there had been ample time for consideration by the Division and comment by Anheuser, and the Board of Appeal were right to view the 44-minute delay as relatively insignificant, OHIM were within their statutory discretion to admit the documents. Having found this, they proceeded to hold that the invoices demonstrated a sufficient extent of use to qualify Budvar’s use of the Budweiser marks as genuine, and thus successfully ground the opposition.