Intelectual Property Disputes

Budějovický Budvar, ńarodni potnik v Anheuser-Busch, Inc, C-482/09 (22 September 2009:  

Both the Czech brewer, Budějovický Budvar, ńarodni potnik and the American brewer Anheuser-Busch, Inc, have marketed their beers in the UK ,using the “Budweiser” sign or using expressions which include that sign since 1973 and 1974 respectively.

On 11th December 1979, the American brewer Anheuser-Busch, Inc, submitted an application to register “Budweiser” as a UK trademark. Anheuser-Busch, Inc, application was opposed by the Czech company Budějovický Budvar, ńarodni potnik, who in turn made their own application to register “Budweiser” as a trademark of their company on 28th June 1989.

On the 19th May 2000, both companies were registered for the trademark of “Budweiser” in the UK Trade Marks Register.  This was allowed because UK law allows concurrent registration of the same or confusingly similar trademarks in circumstances where there was honest concurrent. In February 2000 it was found that in this case there had been honest concurrent use.

On the 18th May 2005, Anheuser-Busch, Inc, brought an invalidity action against Budějovický Budvar, ńarodni potnik’s mark. The action was brought one day after the expiry of the 5 year period of acquiescence prescribed in Article 9 (1) of the CTM Directive. Their application was made on the basis that they made their application to register the trademark in 1979 and it was made earlier that that of Budějovický Budvar, ńarodni potnik, in 1989.

The timing of the application meant that Budějovický Budvar, ńarodni potnik were out of time to make a counterclaim and Anheuser-Busch, Inc.’s application was granted and the UK Registry declared Budějovický Budvar, ńarodni potnik’s mark invalid, even though both companies had used the word “Budweiser for over 30 years in the UK.

Budějovický Budvar, ńarodni potnik, appealed to High Court of England and Wales, however their appeal was unsuccessful.

However the case was appealed from the Trade Marks Registry to the High Court who referred  a number of questions with regards to the nature and timing if acquiescence to the European Court of Justice (ECJ).

The ECJ found said a trademark could be considered to be earlier without having been registered if it was “well known”.

They also held that a later registered trademark could only be declared invalid if it had or was liable to have an adverse effect on the essential function of the earlier trademark, that is, to guarantee to consumers the origin of the goods covered.

As both companies had been using the same mark in good faith for over 30 years and the fact that as the Court stated. “Even though the trademarks are identical, the beers of Anheuser-Busch and Budvar are clearly identifiable as being produced by different companies.”



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