As readers of our IP E-Bulletin will be aware, American beer company Anheuser Busch (AB) and rival Czech beer company Budejovicky Budvar (BB) have been embroiled in a global dispute over the “BUDWEISER” trade mark for the best part of the last 100 years. In the UK both companies have been selling beer under the name “BUDWEISER” for the past 40 years and the most recent dispute within this jurisdiction ended in stalemate in the year 2000 when the Court of Appeal decided that both parties were entitled to hold UK registrations for “BUDWEISER” under the doctrine of "honest concurrent use".
On 19 May 2000 both parties’ trade marks were put on the register in the UK. Four years and 364 days later, AB sought a declaration of invalidity of BB’s work on the grounds that AB’s mark had an earlier filing date; their date of application was some 10 years earlier. The tactical timing of the claim meant that BB received the notice of claim outside of the five year expiry window provided by Article 9(1) of the Trade Marks Directive (89/104 EEC now replaced by 2008/95/EC) and therefore any claim of invalidity by BB would be met with a defence from AB that BB had "acquiesced" to the use and registration of AB’s mark for five years.
The UK Intellectual Property Office (UKIPO) adjudged the trade mark of BB to be invalid (this was upheld by the High Court) as it was identical to the earlier trade mark owned by AB and was registered in respect of identical goods. An appeal to the Court of Appeal by BB led to questions being referred to the Court of Justice of the European Union (CJEU) in respect of:
- the meaning of "acquiescence” under the Trade Marks Directive;
- when the period of "five successive years" for acquiescence commences; and
- whether the proprietor of an earlier mark can succeed in pursuance of a declaration of invalidity despite the fact there has been a long period of honest concurrent use.
The CJEU ruled that the concept of "acquiescence" is an EU law concept and accordingly it should be given autonomous and uniform interpretation. The CJEU also held however that the proprietor of an earlier trade mark could not be held to have acquiesced in the long and well-established honest use, of which he has long been aware, by a proprietor of a later identical trade mark if the proprietor of the earlier mark was not in a position to oppose that use.
Five successive years
The CJEU found that there are three conditions that must be satisfied before the period of five years for acquiescence commences:
- Registration of the later trade mark completed and in good faith;
- Use of the later trade mark; and
- Knowledge of registration of the later trade mark by the proprietor of the earlier trade mark.
Declaration of invalidity
The CJEU found, in the present and exceptional circumstances of the “BUDWEISER” case, that the proprietor of an earlier trade mark (AB) could not obtain the cancellation of an identical later trade mark for identical goods where there has been a long period of honest concurrent use. The CJEU said that such an action for invalidity could succeed if:
- the later mark was identical to an earlier mark;
- the goods covered by the marks were identical; and
- the later mark had an adverse effect on the essential function of the trade mark – which is to guarantee the origin of the goods.
The CJEU held that the long period of concurrent use meant that consumers would not be confused as to the origin of the respective goods. This meant that there was no adverse effect on the essential function of the trade mark and accordingly AB’s case failed.
Despite obiter remarks as regards the potential incompatibility of UK and EU trade mark law, the CJEU has, in effect, introduced the concept of "honest concurrent use" to EU law, albeit in very limited and exceptional circumstances. It will be interesting to see if the CJEU applies the concept in a wider range of circumstances in the future.