Paul Holmes 26 Mar 2003 // 12:00AM GMT
“A-B did not achieve significant success in defending or registering its trademark in countries of the former Soviet Union until The PBN Company joined the A-B team and initiated government and public affairs activities in support of our legal effort.”— Frank Hellwig, Senior Associate General Counsel at Anheuser-Busch Companies.
Since 1989, Anheuser-Busch Companies’ attempts to register its world-famous BUD trademark in the Russian Federation were blocked because of a trademark dispute with the Czech brewery Budejovicky Budvar (“Budvar”). Since 1911, in Europe and in some non-European countries, A-B has fought to protect its world famous trademarks, in which it has invested hundreds of millions of dollars, from Budvar. Budvar prevented A-B from registering these trademarks and competing in the Russian marketplace by registering BUD as an “Appellation of Origin” (A/O).
Budvar asserts that BUD is a geographic indication for the Czech Republic town of Cezky Budejovice, a claim that is disputed by A-B and rejected by courts and other tribunals in many countries. Because of its inability to register its trademarks, A-B could not sell its world famous BUDWEISER beer in Russia. The PBN Company’s assignment was to provide public affairs support to A-B’s legal effort to resolve the trademark dispute with Budvar and to register and protect A-B’s famous trademarks in Russia, Moldova and Kazakhstan. (Budvar had also registered BUD as an A/O in Kazakhstan and was applying for an A/O registration in Moldova.)
Challenge and Opportunity
Budvar’s initial court victories in Russia and other CIS countries combined with its aggressive public affairs and government relations program had made the Russian marketplace off limits to A-B for more than 10 years. Budvar established good relations with Patent and Trademark Offices (PTOs) as well as other government officials in Russia and other CIS countries. Budvar’s beer was actively sold and marketed throughout the region.
While A-B is the world’s largest beer producer and its famous trademarks BUD and BUDWEISER are among the most famous and valuable trademarks in the world, the brand was literally unknown to Russian and other CIS government officials and to consumers in the market. The PBN Company’s challenge was to educate policymakers about the dispute as well as international standards of trademark protection. (Intellectual property rights in Russia and other CIS countries, a concept unknown before 1991, are still in the development stage). In addition, The PBN Company had to ensure that the “A-B vs. Budvar” was resolved on the merits of the case and prevent the Czechs from portraying the dispute as a “David versus Goliath” issue. If successful, The PBN Company would open a huge potential new market of more than 200 million consumers for A-B.
Research, Planning and Objectives
A-B’s legal team and The PBN Company determined that the A-B vs. Budvar case had to be resolved in the context of helping Russia and other CIS countries improve the protection of intellectual property rights. If A-B vs. Budvar was framed as an issue that would gauge Russia’s progress on protecting intellectual property rights of brandholders, the visibility and importance of the case could ensure a fair and unbiased ruling.
As part of A-B positioning, The PBN Company encouraged the company to join the Coalition for Intellectual Property Rights (CIPR), a public-private partnership dedicated to advancing intellectual property rights protection and enforcement throughout the region. CIPR provided A-B and The PBN Company an opportunity to work with Patent and Trademark Offices as well as customs and law enforcement officials in a cooperative, collaborative approach.
The PBN Company’s specific objectives for A-B were:
· To implement a comprehensive public and government affairs program supporting A-B’s legal team in Russia, Moldova and Kazakhstan.
· To register the world famous BUD trademark in Russia, Moldova and Kazakhstan and to cancel, or prevent registration of, the A/Os of Budvar.
· To involve A-B in a constructive manner in helping Russia, Kazakhstan, Moldova and other countries that comprised the former Soviet Union to improve their intellectual property (IP) regimes.
The PBN Company (working closely with A-B’s Senior Associate General Counsel and legal team in Russia and New York) implemented a comprehensive program that included advocacy and educational efforts aimed at Russian, Kazakhi and Moldovan government officials as well as close cooperation and outreach to key U.S. government officials and the news media. The PBN Company established close communication between the client and PTO officials in Russia and other CIS countries. The PBN Company also worked to establish A-B’s Senior Associate General Counsel for Trademarks, Frank Hellwig, as a recognized expert on Geographic Indications and Appellations of Origin, both of which are important aspects of internationally recognized intellectual property standards to which the CIS countries must adhere to join the World Trade Organization.
The PBN Company organized and participated in numerous meetings with IP officials in Russia, Kazakhstan and Moldova to establish a constructive dialogue with A-B and to persuade these officials to make decisions based on international standards and national laws. Working with CIPR, The PBN Company positioned A-B officials as experts on the Geographic Indications requirements under the World Trade Organization’s (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). These experts spoke at more than 12 conferences in 2001 attended by government officials, judges and IP experts, including those in Russia, Moldova, Kazakhstan, Ukraine and Latvia. Mr. Hellwig was a featured speaker at conferences in Moscow, Russia; Crimea, Ukraine; Chisinau, Moldova; and, Washington, DC. The PBN Company also provided support in the preparation of legal arguments and evidence, maintaining communications with decision makers in the relevant PTOs.
The efforts by A-B, its legal team and The PBN Company achieved all of the program objectives:
Rospatent (the Russian Agency for Patents and Trademarks) cancelled Budvar’s A/O registration for BUD on the grounds that BUD is not a geographic term. That ruling cleared the way for A-B to register the BUD name for its beer with Rospatent. Rospatent issued A-B’s BUD trademark registration in May 2001 and A-B is now free to sell BUD brand beer in Russia.
The PBN Company conducted similar government relations activities in Moldova and Kazakhstan on behalf of A-B. The Kazakhi patent office cancelled Budvar’s A/O registration and secured a registration for A-B’s BUD trademark.
In Moldova, Budvar’s application for an A/O registration for BUD was rejected by the Moldovan patent office, resulting in an issuance of other BUD-related marks to A-B in Moldova.