Italian Supreme Court rules in Budweiser feud

The Italian Supreme Court has recommended banning Anheuser-Busch InBev (ABI) from using the ‘Budweiser’ trademark after ruling in a dispute with Czech rival Budějovický Budvar.

At the same time, the court restored Budějovický’s ‘Budweiser Budvar’ trademark in Italy after more than a decade.

Budějovický published the news in a statement on October 8, but the court issued its ruling on September 13.

The Italian Budweiser dispute, one of many long-running global trademark battles between the companies, dates to 1985.

The first lawsuit came in 2001, when ABI told Budějovický to stop using the words ‘Bud’ and ‘Budweiser’ to sell beer in Italy.

In 2002, ABI filed another lawsuit to remove Budějovický Budvar’s trademarks with the ‘Budweiser’ element from the Italian register.

The Czech company later had to start selling beer with the ‘Czechvar’ label, and then with the ‘Budějovický Budvar’ label, in Italy.

In the latest development, Italy’s Supreme Court ruled that geographic names known to the public are granted the same degree of protection as trademarks.

Because ‘Budweis’ is the traditional German name of the Czech city Budějovice, the court found, the geographic origin of Budweiser beer (brewed in the US) is “deceptive” to the public.

The Supreme Court reversed a decision from the Court of Appeal of Rome, which is now expected to confirm the ruling. If so, the ‘Budweiser’ trademark will be considered null and void and ABI must stop selling Budweiser beer in Italy.

ABI can still attempt to show that the relevant Italian public is not actually deceived by the geographic origin of the ‘Budweiser’ mark.

Budějovický director Jiří Boček said it was a “great victory”.

An ABI spokesman said the company was disappointed by the decision but “we continue our efforts to secure our Budweiser trademark rights in Italy. To do so we are considering our legal options”.

The spokesman added that while there is no order prohibiting ABI’s use of Budweiser in Italy, the company will switch to the Bud brand to ensure there is no disruption to supplies until it secures the Budweiser rights.

Stefano de Bosio, Budějovický’s Italian solicitor, said the decision could have wide-ranging implications.

“This is not only a key decision for Budějovický Budvar, but also it is a general milestone in the perception of a conflict between traditional geographical designations and commercial activities. The Italian Supreme Court now says that using traditional names illegitimately is not allowed as it results in customer deception. According to the Italian Supreme Court, historical names are entitled to protection in the same way as present official names.”

Sara Balice, an associate at law firm DLA Piper in Milan, said it was “interesting” that the court said geographic names known to the public, although not currently used, must be taken into account when evaluating whether a trademark will deceive the public.

“According to the Supreme Court decision, this principle is confirmed by Article 29 of the Italian Code of Industrial Property, which acknowledges protection to the geographical indications, and, moreover, by Article 14 of the Italian Code of Industrial Property, which forbids the registration of those trademarks capable to deceive the public as to the geographical origin of the goods or service, without specifying that this origin is actual or not.”