Budějovický Budvar has scored a historical victory in Italy
Budějovický Budvar, National Corporation and its Italian importers achieved a historical victory in a suit concerning the “BUDWEISER” trademark in Italy. Since 1985, Anheuser-Busch InBev (hereinafter referred to as ABI) has been intensively trying to force out the original “BUDWEISER BUDVAR” trademark from Italy and replace it with a copy of the original “Budweiser Beer”. In 2001, ABI filed a lawsuit against the Italian importers of Budějovický Budvar demanding, inter alia, they stop using the words “BUD” and “BUDWEISER” when selling beer. In 2002, ABI filed another lawsuit with the goal of removing Budějovický Budvar’s trademarks with the “BUDWEISER” element from the Italian register. Owing to a preliminary injunction, Budějovický Budvar had to subsequently start selling its beer with the “Czechvar” label and later on with the “Budějovický Budvar” label in Italy, which resulted in an abrupt decrease of sales of Budvar beer by half in 2002, whereas in 2001 Italy was the Budějovický Budvar’s 5th most important export market.
In the end, the Italian Supreme Court ruled in both legal disputes in favour of Budějovický Budvar and its Italian importers. The verdicts are legally effective and final. “This is a great victory. We can return to the Italian market with our original “BUDWEISER BUDVAR” trademark. In addition, the court banned ABI from using their BUDWEISER trademark in Italy, declaring it a deceptive one and removing it from the trademark register. Therefore our competitor must stop selling BUDWEISER beer in Italy,” says Budějovický Budvar’s director Jiří Boček. Since Italy is a large beer market, ABIS’s defeat probably represents its hardest loss in the more than 100-year long global war over the “BUDWEISER” trademark. “I would like to congratulate the ‘Čermák a spol.’ law firm on the victory as well as Mr. de Bosio, who represented us in Italy,” adds Jiří Boček.
“The battle of Italy” was a long and difficult one, indeed. In the end we were rewarded by a breakthrough legal verdict, where the Supreme Court, in layman's terms, bans deceiving the consumer by using the BUDWEISER designation by a legal entity that is not related to České Budějovice at all,” confirms Lukáš Lorenc, ‘Čermák a spol.’ law firm associate.
The verdict of the Italian Supreme Court could have even more extensive impact and become a precedent in other trademark disputes: even historical or original names of towns, countries or localities are of a geographical character. “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,” explains Budějovický Budvar’s Italian solicitor Stefano de Bosio.
The return of the “BUDWEISER BUDVAR” trademark to Italy should result in the increase of sales as well. Both Italian importers of Budvar beer therefore express their joy. “Achieving such a victory after 13 years of fights means happiness, huge success and big satisfaction for me. Good business partners stand together even in bad times. I am glad that our mutual loyalty paid off so well in the end,” says Kaspar Kiem, the owner of K. KIEM GmbH/S.r.l., which has been the importer of the “BUDWEISER BUDVAR” trademark to Italy since 1991. “This represents a great opportunity for us for the future. Thanks to using the original name of BUDWEISER we can now increase the distribution level in both the off trade segment and gastronomy segment. A new era is starting for us and Budějovický Budvar Brewery in Italy,” adds Pietro Biscaldi, BISCALDI LUIGI Import-Export s.r.l.’s managing director.
Legal disputes over the “BUDWEISER” trademark have taken place since 1907, with Budějovický Budvar being substantially the more successful one. During 2000 - 2012, 173 legal disputes and administrative procedures were finalised, 120 of which were won by Budějovický Budvar and 10 finishing in a settlement or draw. Owing to the registration of the “BUDWEISER” and “BUDWEISER BUDVAR” trademarks that are owned by Budějovický Budvar, the supranational concern ABI cannot use its key “BUDWEISER” trademark in nearly 70 countries.