Infringement - Use of similar trademark - ‘Budweiser’
Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc: CA (Civ Div) (Lord Justice Ward, Mr Justice Warren, Sir Robin Jacob): 3 July 2012
The case concerned the ongoing dispute between the parties over the word ‘Budweiser’.
Both the respondent and appellant were registered as proprietors of the ‘Budweiser’ mark, however the respondent’s mark was the earlier registered trademark. The respondent successfully applied for the appellant’s registration to be declared invalid. The appellant appealed against the declaration of invalidity and that appeal was dismissed, save on one ground, by the Chancery Division. The appellant appealed. The Court of Appeal gave judgment on certain issues, but also referred questions to the Court of Justice of the European Union for a preliminary ruling (see  All ER (D) 196 (Oct)).
Relevant to the instant hearing, the European court ruled that article 4(1)(a) of Council Directive (EEC) 89/104 (to approximate the laws of member states relating to trademarks) had to be interpreted as meaning that the proprietor of an earlier trademark could not obtain the cancellation of an identical later trademark designating identical goods where there had been a long period of honest concurrent use of those two trade marks where, in circumstances such as those in the main proceedings, that use neither had nor was liable to have an adverse effect on the essential function of the trademark which was to guarantee to consumers the origin of the goods or services.
The respondent submitted, inter alia, that, on the basis of the earlier findings of fact during the course of passing off litigation between the parties, it could demonstrate an adverse effect. The appellant submitted that where a long-standing situation of honest concurrent use of the same mark for the same goods had come about, each user could register its mark, each could stop third parties from using it, but neither could stop the other. The state of honest concurrent use meant that the essential function of the parties’ trademarks was not regarded as having adverse effect. There would always be some confusion but that did not matter. The appeal would be allowed.
The level of confusion in the earlier cases had clearly not been negligible otherwise the claims in passing off would have failed for that reason alone. The two brands had lived side by side for many years in different get-ups, prices and tastes and with large sales. Sales of the respondent’s beer were much greater than those of the appellant, but the latter’s were substantial. It could be inferred from those facts that the public by and large had become used to that. Otherwise, there would always be some who were confused, albeit many were not. In answering the question referred to it, the European court had not ruled that only de minimis levels of confusion were acceptable when there was honest concurrent use.
Nor had that court ruled that the inevitable confusion in a same mark/same goods case was enough to take a case out of acceptable concurrent use. It was unrealistic to operate a premise that, even where there was a long-established honest concurrent use, the mark of one party had to provide a guarantee of origin in that party and not the other. Consequently, there was no impairment of the guarantee of origin of either party’s mark; the guarantee was different given a situation of long-established honest concurrent use (see , -, ,  of the judgment). Decision of Norris J  All ER (D) 274 (Feb) reversed In Part.
James Mellor QC and Simon Malynicz (instructed by Marks & Clerk Solicitors) for the appellant; Michael Bloch QC and Harris Bor (instructed by MacFarlanes) for the respondent.