In Case T-366/05

ORDER OF THE COURT OF FIRST INSTANCE (Fifth Chamber)

15 November 2006 (*)

(Community trade mark – Opposition proceedings – Application for the Community word mark BUDWEISER – Earlier international word marks and figurative marks BUDWEISER and BUDWEISER BUDVAR – Refusal to register – Restriction of the goods covered – Action manifestly lacking any foundation in law)

In Case T-366/05,

Anheuser-Busch, Inc., established in Saint Louis, Missouri (United States), represented by V. vonBomhard, B. Goebel, A. Renck and A. Pohlmann, lawyers,

applicant,

v

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

defendant,

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

Budějovický Budvar, národní podnik, established in Česke Budějovice (Czech Republic), represented by F. Fajgenbaum, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 11 July 2005 (Case R 514/2004‑2) relating to opposition proceedings between Budějovický Budvar, národní podnik, and Anheuser‑Busch, Inc.,

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

composed of M. Vilaras, President, F. Dehousse and D. Šváby, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court of First Instance on 26 September 2005,

having regard to the response of OHIM lodged at the Registry of the Court of First Instance on 20 December 2005,

having regard to the response of the intervener lodged at the Registry of the Court of First Instance on 10 January 2006,

makes the following

Order

Background to the dispute

1On 11 April 2000 Anheuser‑Busch, Inc., filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.

2That application sought registration of the word mark BUDWEISER.

3The goods in respect of which registration of the word mark BUDWEISER was sought fall within Classes 32 and 33 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following descriptions for each class:

–Class 32: ‘Beers’;

–Class 33: ‘Alcoholic beverages’.

4The application for registration of the word mark BUDWEISER was published in the Community Trade Marks Bulletin on 18 June 2001.

5On 18 September 2001 Budějovický Budvar, národní podnik, (‘Budvar’) filed a notice of opposition, under Article 42 of Regulation No 40/94, in respect of all of the goods covered by the application for registration.

6In support of its opposition Budvar alleged, first, a likelihood of confusion, within the terms of Article 8(1)(b) of Regulation No 40/94, as between the word mark applied for and the earlier international marks of which it is the proprietor. The earlier international marks in question are the following:

–the international word mark BUDWEISER, reference R 238 203, registered initially on 5 December 1960 for ‘beer of any kind’ (Class 32), with effect in Germany, Austria, the Benelux countries and Italy;

–the international figurative mark No 674530, registered on 19 May 1997 for ‘malt’ (Class 31) and ‘beer’ (Class 32), with effect in Austria, the Benelux countries, Italy and France (in France protection is granted for ‘malt’ and ‘beers of the BUDWEISER BUDVAR designation of origin’), reproduced below:

–the international figurative mark No 614536, registered on 11 March 1994 for ‘beers’ (Class 32), with effect in Germany, Austria, the Benelux countries, France and Italy, reproduced below:

7The opposition was based on all of the goods covered by those marks.

8By letter sent to the Opposition Division of OHIM on 24 July 2002, Anheuser‑Busch requested that Budvar furnish proof of the use of its international marks, in accordance with Article 43(2) of Regulation No 40/94. On 1 October 2002 the Opposition Division invited Budvar to furnish proof of the use of the international marks bearing the reference numbers R 238 203 and 614 536 by 2 December 2002 at the latest. Budvar provided, within the period prescribed, documentation designed to prove the use of those two international marks.

9In support of its opposition, and on the basis of Article 8(4) of Regulation No 40/94, Budvar put forward, second, four designations of origin for beer registered on 22 November 1967 with the World Intellectual Property Organisation, in accordance with the Lisbon Arrangement on the protection of designations of origin and their international registration. Those designations of origin are the following:

–designation of origin No 49: ČESKOBUDĚJOVICKÉ PIVO (BUDWEISER BIER under the German version of the registration);

–designation of origin No 50: BUDĚJOVICKÉ PIVO – BUDVAR (BUDWEISER BIER – BUDVAR under the German version of the registration);

–designation of origin No 51: BUDĚJOVICKÝ BUDVAR (BUDWEISER BUDVAR under the German version of the registration);

–designation of origin No 52: BUDĚJOVICKÉ PIVO (BUDWEISER BIER under the German version of the registration);

10In the light of those registrations, Budvar submitted that all of the designations of origin in question enjoyed protection in France, Italy and Portugal and, in respect of designations of origin Nos 50, 51 and 52, protection in Austria.

11By decision of 10 June 2004 the Opposition Division upheld the opposition filed by Budvar and consequently rejected the application for the word mark BUDWEISER.

12For reasons of procedural economy, the Opposition Division restricted its examination of the likelihood of confusion which might exist between the word mark applied for, namely BUDWEISER, and international figurative mark No 674530. The Opposition Division essentially found that, in the light of the identical nature of the goods concerned and the high degree of similarity of the signs at issue, there was a likelihood of confusion between the marks.

13On 23 June 2004 Anheuser‑Busch brought an appeal against the decision of the Opposition Division.

14By decision of 11 July 2005 (Case R 514/2004‑2), notified to Anheuser‑Busch on 15 July 2005 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal brought against the decision of the Opposition Division.

15The Board of Appeal found, in particular, that the goods in Class 32 in respect of which the trade mark was sought (‘beers’) were identical to some of the goods covered by international figurative mark No 674530 (‘beer’) and that the goods in Class 33 in respect of which the trade mark was sought (‘alcoholic beverages’) were very similar to beer. In that regard, the Board of Appeal referred to certain arguments which Budvar had raised before it. Those arguments emphasised, first, that the term ‘alcoholic beverages’ included cider and ‘alcopops’, which were very similar to beer; second, that all alcoholic drinks including beer were consumed for a common motive, namely to quench thirst, to supplement a meal, or as part of a social event, and all had the same distribution outlets; third, that there was a significant trend towards drinks in which beers were mixed with spirits.

16Furthermore, in the light of the high degree of similarity of the signs at issue from a visual and phonetic point of view, the Board of Appeal found that there was a likelihood of confusion between the word mark applied for, namely BUDWEISER, and international figurative mark No 674530.

17By letter of 23 September 2005 sent to OHIM, Anheuser-Busch restricted the goods in Class 33 in respect of which the trade mark was sought to ‘alcoholic beverages, namely wines and spirits’.

Forms of order sought

18Anheuser-Busch claims that the Court of First Instance should:

–partially annul the contested decision in so far as it rejects the trade mark application for goods in Class 33;

–order OHIM to pay the costs.

19OHIM contends that the Court of First Instance should:

–review the legality of the contested decision on the basis of the initial list of goods in Class 33;

–dismiss the action;

–order Anheuser-Busch to pay the costs.

20Budvar claims that the Court of First Instance should:

–declare Anheuser-Busch’s action to be inadmissible;

–declare that the restriction of goods filed by Anheuser‑Busch on 23 September 2005 is not admissible;

–in the alternative, confirm the contested decision on the basis of Article 7(1)(c) and (g) of Regulation No 40/94;

–in the alternative, confirm the contested decision on the basis of Article 8(1) of Regulation No 40/94;

–in the alternative, confirm the contested decision on the basis of Article 8(4) of Regulation No 40/94;

–order notification of the Court’s decision to OHIM;

–order Anheuser-Busch to pay the costs.

Law

21Under Article 111 of the Rules of Procedure of the Court of First Instance, where an action is manifestly lacking any foundation in law, the Court may give a decision by reasoned order without taking further steps in the proceedings.

22In this case, the Court takes the view that there is sufficient information before it and has decided, pursuant to Article 111 aforesaid, to give a decision on the action without taking further steps in the proceedings.

Arguments of the parties

23The action brought by Anheuser-Busch is based on a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94.

24Anheuser‑Busch emphasises that the goods in Class 33, ‘now comprised by the application’, are dissimilar to those covered by the earlier mark, which justifies the conclusion that there is no likelihood of confusion in the present case.

25More particularly, Anheuser‑Busch considers that the goods in comparison are different in terms of their nature, purpose and use. In addition, those goods do not have the same distribution channels and their consumers are not the same. Furthermore, as regards Budvar’s claim, which was upheld by the Board of Appeal, that there is a significant trend nowadays towards drinks in which beers are mixed with spirits, Anheuser‑Busch states that it is aware of the existence of such new products. However, Budvar did not submit any evidence in support of its claim and the goods which the Board of Appeal referred to were not available on the Austrian and French markets prior to the filing of the opposition. Finally, Anheuser‑Busch submits that the contested decision contradicts three of OHIM’s previous decisions in other cases.

26OHIM and Budvar, for their part, do not agree that Anheuser‑Busch should be able to rely on the restriction of the goods in Class 33 in respect of which the trade mark is sought, which it made after the contested decision, and, in any event, they claim that the action should be dismissed.

Findings of the Court

27It should be noted at the outset that, under Article 63 of Regulation No 40/94, the Court of First Instance may annul a decision of a Board of Appeal of OHIM only ‘on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of [Regulation No 40/94] or of any rule of law relating to their application or misuse of power’. That review of legality must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (Case T‑57/03 SPAG v OHIM – Dann and Backer(HOOLIGAN) [2005] ECR II‑287, paragraph 17, and Case T‑320/03 Citicorp v OHIM(LIVE RICHLY) [2005] ECR II‑3411, paragraph 16).

28In addition, under Article 26(1)(c) of Regulation No 40/94, ‘an application for a Community trade mark shall contain … a list of the goods or services in respect of which the registration is requested’.

29Article 44(1) of Regulation No 40/94 provides that ‘the applicant may at any time withdraw his Community trade mark application or restrict the list of goods or services contained therein’.

30According to Rule 20(5) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), ‘if, pursuant to Article 44(1) of the Regulation, the applicant restricts the list of goods and services, [OHIM] shall communicate this to the opposing party and call upon him, within such period as it may specify, to submit observations stating whether he maintains the opposition and, if so, against which of the remaining goods and services’.

31In the present case, it must be pointed out, first, that, by the application which it brought before OHIM on 11 April 2000, Anheuser‑Busch sought to register the word mark BUDWEISER for ‘beers’ (Class 32) and ‘alcoholic beverages’ (Class 33).

32Second, in the context of its examination of the similarity of the goods in dispute, the Board of Appeal rightly took account of the goods in respect of which registration was sought, that is to say, inter alia, the category of goods ‘alcoholic beverages’ in Class 33.

33The Board of Appeal thus stated in paragraph 22 of the contested decision:

‘The goods [in respect of which registration is sought] in Class 32 (beers) are identical to some of the goods (i.e. beer) in respect of which [Budvar’s] earlier registration is protected in Austria. The goods [in respect of which registration is sought] in Class 33 (alcoholic beverages) are very similar to beer, for the reasons given by [Budvar] and summarised above (see paragraph 15, third, fourth and fifth indents).’

34Referring to certain arguments raised by Budvar, and set out in the third, fourth and fifth indents of paragraph 15 of the contested decision, the Board of Appeal did not carry out a detailed asessment of the similarity of the goods in dispute. The Board of Appeal based its decision on the characteristics of certain goods in the alcoholic beverages category and on possible common features of beer and alcoholic beverages in coming to the conclusion, in paragraph 22 of the contested decision, that, generally speaking, ‘alcoholic beverages’ were ‘very similar’ to beer.

35It should be pointed out that, in relation to a category of goods, the Board of Appeal was not under any obligation to make an assessment of each of the goods coming within the category ‘alcoholic beverages’ in Class 33.

36Third, by letter of 23 September 2005 sent to OHIM, that is to say, after the contested decision had been adopted, Anheuser‑Busch restricted the goods in Class 33 in respect of which registration was sought to ‘alcoholic beverages, namely wines and spirits’. In the documents which it has submitted to the Court, OHIM confirms that it accepted that restriction.

37Fourth, in its action before the Court, Anheuser‑Busch is seeking partial annulment of the contested decision in so far as it rejects the trade mark application for the goods in Class 33. Anheuser‑Busch does not challenge the contested decision in relation to the goods in Class 32 (‘beers’) in respect of which the trade mark is sought.

38Fifth, it is clear from the application that the single plea in law raised by Anheuser‑Busch concerns the restriction of the goods in Class 33 in respect of which the trade mark is sought, which was made by letter of 23 September 2005 sent to OHIM after the contested decision had already been adopted.

39Thus, under a heading 2 of the application entitled ‘the goods under comparison are dissimilar’, Anheuser‑Busch submits that the goods in Class 33 ‘now comprised by the application’ are dissimilar to those covered by the earlier mark.

40In that context, the arguments raised by Anheuser‑Busch concerning the similarity of the goods are based solely on the comparison between beer, on the one hand, and wine and spirits, on the other.

41Anheuser‑Busch states, in particular:

‘The Board’s assessment overlooks that the consumer in general does not expect beer and alcoholic drinks (meaning wines or spirits) to come from a common source …

… alcoholic beverages being wines are not similar in nature to beer … wines are made by wineries which do not usually have any connection with breweries. … Similarly, spirits are … characterised by a high level of alcohol and produced by distilleries …

… Contrary to wines and spirits, beer is consumed at any time of the day … beers and wines are not complementary and rarely in competition …; and as regards spirits, these are quite clearly neither complementary to nor in competition with beers.

… beers on the one hand and wines and spirits on the other are usually presented in different areas of any sales outlets and placed on different shelves … Furthermore [those goods] are clearly differentiated by their packaging, the unit size, and their price …

… beer is lawfully sold to and consumed by people under age whereas spirits can generally not be consumed by people under 18.’

42Similarly, recalling the three reasons which led the Board of Appeal to form the view that the goods in dispute were very similar, Anheuser‑Busch points out that the first reason (namely that the term ‘alcoholic beverages’ includes cider and ‘alcopops’, which are very similar to beer) is not applicable to alcoholic beverages ‘as more specifically defined in the meantime’.

43It follows from the above that the single plea raised by Anheuser‑Busch does not call into question the Board of Appeal’s finding that ‘alcoholic beverages’ and beer are, generally speaking, ‘very similar’.

44The fact that Anheuser‑Busch was able to raise certain arguments before the Board of Appeal seeking to establish that beer, on the one hand, and wines and spirits, on the other, are different does not alter the fact that the goods covered by the trade mark application of 11 April 2000, and included in Class 33, were ‘alcoholic beverages’. It was, moreover, along those lines that the Board of Appeal rightly compared beer with ‘alcoholic beverages’, without ruling on the existence of a hypothetical similarity between beer and wines and spirits. It is to be noted in that respect that, at the time of adoption of the contested decision, no restriction of the goods in respect of which the trade mark is sought had been made formally, in accordance with the rules laid down by Community legislation. There is thus no scope for criticism of the Board of Appeal in that regard (see, to that effect, Case T‑130/03 Alcon v OHIM – Biofarma(TRAVATAN) [2005] ECR II‑3859, paragraph 54).

45In addition, Anheuser‑Busch does not claim at any point in its application that, since beer, on the one hand, and wines and spirits, on the other, are different, beer is, generally speaking, a different product from ‘alcoholic beverages’, and that the Board of Appeal erred in that regard. In any case, assuming that Anheuser‑Busch’s application may be interpreted in that way, no concrete fact has been put forward before the Board of Appeal, or, moreover, the Court which would make it possible to measure the importance which wines and spirits occupy within the category ‘alcoholic beverages’. Furthermore, the arguments raised by Anheuser‑Busch in support of its single plea do not call into question the fact that the term ‘alcoholic beverages’ includes cider and ‘alcopops’, which are very similar to beer, and that, with the exception of wines and spirits, alcoholic drinks, including beer, are consumed for a common motive and have the same distribution outlets.

46Finally, Anheuser‑Busch does not raise any arguments concerning the similarity of the marks in dispute since it assumes that, in the light of the difference between beer, on the one hand, and wines and spirits, on the other, there is no likelihood of confusion in the present case.

47For all of those reasons, and regard being had to the goods covered by the trade mark application of 11 April 2000, the review of legality which the Court must carry out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal, and the terms used in the application, the arguments raised by the applicant in support of its single plea are not such as to call the contested decision into question.

48The single plea raised by Anheuser‑Busch must therefore be rejected as manifestly unfounded.

49Consequently, without it being necessary to give judgment on the objection of inadmissibility or the alternative arguments raised by Budvar, the action brought by Anheuser‑Busch must be dismissed in its entirety.

Costs

50Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

51Since Anheuser‑Busch has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and Budvar.

On those grounds,

THE COURT OF FIRST INSTANCE (Fifth Chamber)

hereby orders:

1.The action is dismissed;

2.Anheuser‑Busch, Inc., shall pay its own costs and those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) and by Budějovický Budvar, národní podnik.

Luxembourg, 15 November 2006.

* Language of the case: English.