Brussels, 07/02/2011 (Agence Europe) - Directive 98/104/EEC to approximate the laws of the member states relating to trade marks “precludes in principle the long-established honest concurrent use of two identical marks covering identical goods by two different proprietors of the marks”, said Advocate General Verica Trstenjak on 3 February in her opinion in Case C-482/09, responding to a series of questions put by the Appeal Court of England and Wales (UK).
She says that, under the terms of the directive, the commencement of the period of “acquiescence” during which the holder of an earlier trademark may oppose the use of a later mark registered in a member state must meet three cumulative conditions: - the later mark must have been registered; - this mark must have been used; - the holder of the earlier mark must have had knowledge of the registration and use of this later mark.
Thus, this period of acquiescence “starts running from the time at which the proprietor of the earlier mark becomes aware of the registration and use of the later mark in the member state”. The period can therefore start “on the date of registration at the earliest”, if the later mark is used from that date and the proprietor is aware of its use. The period of acquiescence “can start running, and may also end, before the proprietor of the earlier mark has had his mark registered”. Therefore, “the proprietor of an earlier mark does not have to have it registered before his 'acquiescence' in the use of a later mark by another person in the same member state can start”.
However, this case is quite exceptional. The advocate general suggests that the Court deem the relevant article [Article 4(1)(a)] of the directive inapplicable because it would be impossible to apply it retroactively. She proposes that it be left to the national court to rule.
The case refers to a dispute between Czech brewer Budìjovický Budvar (BB) and US brewer Anheuser-Busch (AB) which in 1973 and 1974 respectively brought beers onto the United Kingdom market which they marketed under the name “Budweiser”. The England and Wales Appeal Court decided in 2000 that both could register the name “Budweiser” as a trademark, taking the view that on this market, while the names were identical, the beers were not. In coming to this decision, the court applied a 1938 law on trademarks which allows marks which are identical or similar to the point of being thought the same to be registered at the same time in cases of honest concurrent use.
On 18 May 2005, however, one day before the expiry of the five-year period of “acquiescence” provided for in Directive 89/104/EEC, AB applied to the Trade Marks Registry for a declaration of the invalidity of the “Budweiser” mark registered for BB, basing its request on the directive. The directive provides for a limitation period of five years, beyond which time the holder of an earlier mark who has knowingly tolerated the use of a later mark may no longer request a declaration of invalidity or oppose the use of a later mark unless the application for the later mark was made in bad faith. AB claims that, even though the trademarks may have been registered on the same day, it is the holder of the earlier mark since it submitted its application for registration in 1979, while BB's dates from June 1989. In the belief that it had the right to have the BB mark declared invalid, it took its case to the Court of Appeal of England and Wales. This court asked the Court of Justice whether, under the terms of the directive on trademarks, AB can request a declaration of invalidity of the BB trademark and how the period of acquiescence was to be calculated.
Advocate General Trstenjak said that, in this case, there is no justification either “for the retroactive application of Article 4(1)(a) of Directive 89/104” or for its application from the date of its coming into force. Accordingly, “the questions referred for a preliminary ruling must therefore be considered redundant”. (F.G./transl.rt)