Brussels, 22/09/2011 (Agence Europe) - The two breweries, Anheuser-Busch (USA) and Budejovický Budwar (Czech Republic), may both continue to use the trade name “Budweiser” in the United Kingdom. In the case in hand, the “long period of honest concurrent use of the two identical trade marks” does not have an adverse effect on the essential function of a brand, that is to ensure consumers know the origin of products or services.
This, in essence, was the ruling by the Court of Justice on Thursday 22 September in Case C-482/09 (see EUROPE 10310 on the conclusions of Advocate Genetral Trstenjak in this affair), in response to referral from the British Court of Appeal (England and Wales). Litigation between the breweries Anheuser-Busch and Budejovický had been referred to the British court. They have both been present on the British market since 1974 and 1973 respectively, using the brand “Budweiser” (or under terms including that sign), having obtained registration of the brand in the UK in February 2001 (British law allowing the registration of identical or similar brands for honest concurrent use). Nonetheless, on 18 May 2005 (i.e. four years and 364 days after registration), Anheuser called for the brand attributed to Budvar to be cancelled, arguing that it had put forward its request for registration ten years before its competitor. The Court of Appeal called on the Court of Justice of the European Union to interpret the directive on trade marks (89/104/EEC) on the subject and, in particular, concerning the period during which the holder of an earlier brand can “acquiesce” or oppose the simultaneous use, in good faith, of an identical brand by a third party.
The Court above all states in its ruling that the five-year period (period of “limitation in consequences of acquiescence”) on the expiry of which the proprietor of the earlier mark loses his right to oppose the use of the later mark, only begins once the later mark has been registered in the member state concerned. Accordingly, mere use of the later mark without any steps to have it registered cannot start that period running. On the other hand, registration of the earlier mark does not constitute a prerequisite for that period to start running, but the Court also states that the proprietor of an earlier trade mark cannot be held to have acquiesced in the long and honest use by a third party of an identical later trade mark if he was not in any position to oppose that use. Consequently, the period during which the proprietor of the earlier trade mark was not capable of opposing the use of the later mark cannot be taken into account when calculating the expiry of the limitation period.
Next, the Court states that a later registered trade mark can be declared invalid only if it has or is liable to have an adverse effect on the essential function of the earlier trade mark, which is to guarantee the consumers the origin of the goods covered by it. In the present case, two breweries had marketed their beers under the brand name “Budweiser” for nearly 30 years before the mark was registered, without this causing any real problems and with both companies having used the mark in all good faith.
Given all these circumstances and the fact that consumers can distinguish between the beers of the two producers due to the beer's taste, price and presentation, which are different, the Court concludes that the two identical trade markets may co-exist on the market in question, and that Budvar's later registration in the United Kingdom of the later “Budweiser” trade mark need not be declared invalid. (FG/transl.jl)