JOINT DISSENTING OPINION OF JUDGES COSTA AND CABRAL BARRETO

(Translation)

To our great regret, we are unable to agree with the reasoning of the majority in this important new case for the reasons set out below.

1. The filing of the application for registration with the National Institute of Industrial Property ( NIIP ) in 1981 conferred on the applicant company a right of priority over subsequent applications. In the present case, the applicant company was entitled to expect that its application would be examined in accordance with th at rule and the other r ules governing intellectual property in force at that time, particularly as its application had already been considered by the NIIP , and indeed an objection by Budejovicky Budvar ha d been dismissed. In these circumstances, and even though planning and trade - mark law are of course quite different , Anheuser-Busch Inc. was in a very similar position to that of the applicant company in the Pine Valley case, in which the Court found that the fact that outline planning permission had been granted amounted to a favourable decision as to the principle of the proposed development ( Pine Valley Developments Ltd and Others v. Ireland , judgment of 29 November 1991, Series A no. 222, p. 2 3, § 51) .

2. Further, the illegal or fraudulent use by a third party of a mar k in respect of which an application for registration has been made may, in certain circumstances, entitle the applicant to compensation. Such a right is currently contained in the Portuguese New Code of Industrial Property and, although it was not set out in either the 1940 Code or the 1995 Code, which was applicable in the present case, it was recognised in general terms by at least one judgment of the Lisbon Court of Appeal (see paragraph 31 of the judgment). This is an additional reason why the legal position of an applicant for the registration of a trade mark has pecuniary implications .

3. Further, and decisively, by the time the Portuguese State entered into the 1986 Agreement with Czechoslovakia , the applicant company had already filed , some five years earlier , an application to regist e r its trade mark. It was entitled not only to a right of priority but also to the hope of seeing its application examined in accordance with the rules and principles in force when it was filed and, consequently, to have the mark definitively regist ered . However, registration was ultimately refuse d , not because there was any risk of confusion over the source of the product concerned, but s olely as a result of legislation that was introduced after 19 May 1981 , when the application for registration was filed. That legislation was the exclusive cause of the refusal to regist e r the mark . In their decisions, the domestic courts did not rely on Article 189 § 1 (j), which laid down that registration of a mark was to be refused if it contained “expressions” that contravened the national legislation. The registration wa s refuse d because it fell foul of the 1986 Agreement.

4. All these factors lead us to consider that the applicant company was the owner of a pecuniary interest that was recognised under Portuguese law. It was entitled to expect that its application would be examined and approved, as the ob jections that had been raised by the Czech company had been dismissed by the competent authorities and there were no other grounds for refusing its application at that time. In short, the applicant company had a legitimate expectation that was sufficiently strong to attract the protection of Article 1 of Protocol No. 1. That provision is therefore applicable in the present case. In that connection, we agree with the majority ’ s comments in the section of the judgment which unambiguously state s that Article 1 of Protocol No . 1 was applicable, an issue which had never been clearly settled by a decision of the Court (in the British American Tobacco Company Ltd v. the Netherlands , judgment of 20 November 1995, Series A no. 331, after the Commission had expressed the opinion that Article 1 of Protocol No 1 had not been violated, the Court held ( § 91) that it was unnecessary to decide whether the patent application filed by the applicant company in that case constituted a “possession” tha t came within the scope of the protection afforded by Article 1 of Protocol No. 1).

5. The refusal to register the mar k indisputably amount s to interference with the applicant company ’ s right of property. Although in the present case the applicant company cannot really be said to have been deprived of ownership of the “ Budweiser ” mark, as there was no formal or constructive exp ropriation , it is n ever theless undeniable that the effect of the decisions of the domestic courts has been to prevent the applicant company from us ing the mark in Portugal . Its total inability to exploit the mark commercially constitutes interference . Such interference must comply with the rule of law , pursue a legitimate aim and strike a “fair balance” between the demands of the general interest of the community and the requirements of the protection of the individual ’ s fundamental rights ( Iatridis v. Greece [GC], no. 31107/96, § 58, ECHR 1999-II). It must be remembered that in the business world, the right to use a mark in a market such as the Portuguese market may have considerable value.

6. While we are able to agree that the interference with the applicant company ’ s rights was provided for by law ( the 1986 Agreement ) and had a legitimate aim ( namely to secure compliance with the international obligations of the Portuguese State , which, by signing the 1986 Agreement had certain obligations to wards Czechoslovakia and subsequently the Czech Republic ) , it remains to be determined whether a “fair balance” was struck between the demands of the general interest of the community and the

requirements of the protection of the individual ’ s fundamental rights. Ascertaining whether such a balance existed requires an overall examination of the various interests in issue, which may call for an analysis of the compensation terms – if the situation is akin to the taking of property (see, among other authorities, Lithgow and Others v. the United Kingdom , judgment of 8 July 1986, Series A no. 102, pp. 50-51, §§ 120 and 121).

7. The State ’ s right to enter into international agreements that are necessary for the protection of certain products cannot be disputed, but in this context the State must also take into account any rights of private p arties , especially if, like the applicant company, they are non-nationals. Although a taking of property must always be effected in the public interest, different considerations may apply to nationals and non-nationals and there may well be legitimate reason for requiring nationals to bear a greater burden in the public interest than non-nationals ( Lithgow and Others , § 116).

8. As we have already noted , the State intervened under the 1986 Agreement in a way that objectively harmed the applicant company ’ s pecuniary interests. Although it may not have inten ded to intervene in the statutory procedure leading to the registration of the mark in the applicant company ’ s name, the effect of its intervention was indisputably to make such registration legally impossible . It s intervention thus produced , albeit inadvertently , the same result. It was undoubtedly legitimate for the State to intervene in this way in order to protect its own products under terms of reciprocity vis-a-vis the other State Party to the 1986 Agreement. However , it did so without taking into account the applicant company ’ s pre-existing rights , when it would have been possible for it to do so by providing, for example, adequate compensation. That being so, the Portuguese authorities caused the applicant company to bear an individual and excessive burden which upset the “fair balance” which should have be en struck between the requirements of the general interest and the protection of the right to the peaceful enjoyment of one ’ s possessions.

In our view, there has therefore been a violation of Article 1 of Protocol No. 1.