Anheuser-Busch Inc. v Budejovicky Budvar N.P., B & S Foods Aktiebolag and Birra Mex Aktiebolag
| Jurisdiction | England & Wales |
| Judge | Mr Justice Norris |
| Judgment Date | 19 February 2008 |
| Neutral Citation | [2008] EWHC 263 (Ch),[2008] EWHC 1711 (Ch) |
| Docket Number | Case No: CH/2007/APP/0562 |
| Court | Chancery Division |
| Date | 19 February 2008 |
[2008] EWHC 263 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Mr Justice Norris
Case No: CH/2007/APP/0562
Mr James Mellor QC (instructed by Marks & Clerk Solicitors) for the Appellant
Mr Michael Bloch QC (instructed by Macfarlanes) for the Respondent
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Date…14 February 2008 Mr Justice Norris……………………………
Anheuser-Busch Inc (“AB”) is a Missouri brewer that has since about 1875 sold beer under the name “Budweiser”. Budejovicky Budvar Narodni Podnik (“BB”) is a brewer in the town of Ceske Budovice (formerly “Budweis”) which has since 1895 also sold beer under a name consisting of or including “Budweiser”. Disputes over the right to use the word “Budweiser” in connection with such beer have existed since at least 191The current appeal is the latest round of such disputes in this jurisdiction.
BB first actively entered the UK market in 1973. AB gradually entered the UK market in the period 1974 to 1979. Apart from the common use of the word “Budweiser” there was no similarity of taste or appearance between the two beers and their containers were different. But the use of the identical mark “Budweiser” in connection with identical categories of goods (albeit that the goods themselves were distinctive) has continued for over 30 years.
In November 1976 BB applied to register the mark “Bud” in script as a trademark in Class 32. The application was opposed by AB.
In 1979 AB commenced passing-off proceedings against BB claiming an injunction to prevent BB from selling or dealing in beer by the name of “Budweiser”. BB counterclaimed for the same relief against AB. The trademark application was stayed to await the outcome of the passing off proceedings.. The decision of Whitford J. at first instance is reported [1984] FSR 413. He held that neither brewer could be disentitled to use the word “Budweiser” since neither was employing it improperly. AB appealed that decision and BB cross-appealed. The decision of the Court of Appeal dismissing the appeal is reported at [1984] FSR 448. Dillon LJ pointed out (at page 476) that the right of property for the invasion of which a passing-off action is a remedy, is a right of property, not in the mark or name or get up improperly used, but in the business or goodwill likely to be injured by the misrepresentation made by passing off one person's goods as the goods of another. The Court held that AB had no goodwill capable of being damaged, so that the trial judge had correctly concluded that there was a dual reputation in the name “Budweiser” which a neither party could claim had been improperly achieved.
Following the decision of the Court of Appeal the trademark application was revived. Section 11 of the Trade Marks Act 1938 provided:-
“It shall not be lawful to register as a trademark … any matter the use of which would by reason of its being likely to deceive or cause confusion…. be disentitled to protection in a court of justice..”
The registrar (whose decision is reported at [1988] RPC 535) decided that AB's evidence did not disclose a sufficient degree of confusion, and the section 11 ground of opposition to BB's application to register “Bud” as a mark failed. Section 12(2) of the 1938 Act provided:-
“In case of honest concurrent use, or of other special circumstances which in the opinion of the Court or of the Registrar make it proper so to do, the Court or the Registrar may permit the registration of trademarks that are identical or nearly resemble each other in respect of the same goods… by more than one proprietor”
The Registrar found that there was honest concurrent use and would have registered BB as proprietor of the mark “Bud” also on that basis.
AB appealed this decision. The decision of Walton J. is reported at [1988] RPC 547. He affirmed the Registrar's decision on both the principal and the alternative grounds. His reason was that if the substantive mark of “Budweiser” could be freely used by BB, and if (as was the case) customers in fact contracted this to “Bud”, then there could be no question of the Court saying that BB was not permitted to use the way in which its customers were actually going to describe its product. As a further ground Walton J. was in no doubt that there had been honest concurrent use, and in no doubt that there were special circumstances; so he would have registered under section 12(2) of the 1938 Act as well. Following this victory for BB, AB itself also successfully registered “Bud” as a mark.
It had now been judicially established that neither AB nor BB was, as against the other, exclusively entitled to the goodwill attaching to the name “Budweiser”: and that BB was entitled to register the mark “Bud” because it could freely use the name “Budweiser” of which the mark was simply a contraction (in respect of which there was in any event honest concurrent use) —and that AB was likewise so entitled. This left outstanding trademark applications relating to the mark “Budweiser”. On the 11th December 1979 AB had applied to register the mark “Budweiser” for “beer, ale and porter”, which application was opposed by BB. On the 28th June 1989 BB itself applied to register the mark “Budweiser” for “beer ale and porter; malt beverages”, which application was in turn opposed by AB.
AB's application of the 11 th December 1979 and BB's application of the 28 th June 1989 were eventually judicially determined in February 2000 and both marks were put on the register on the 19 th May 2000. These dates are crucial to the present application.
The process of determining AB's and BB's respective rights to the mark “Budweiser” had taken so long that the Trade Marks Act 1938 had been repealed and replaced by the Trade Marks Act 1994, but it was common ground that the proceedings having begun under the provisions of the 1938 Act had to continue to be dealt with under that Act. (There was apparently no suggestion that the terms of the 1994 Act had rendered the battle entirely without point). The battleground therefore remained the competing provisions of section 11 and section 12(2) of the 1938 Act. The Court held ( [2000] RPC 906 at 916) that the outcome of the passing off action was not determinative of the trademark applications then before it (passing off being a matter of private right between AB and BB and the registration of a mark being a matter between the applicant and the public), but that section 12(2) required a consideration of the actual use made of the mark (ibid 914) and that the situation covered by section 12(2) was analogous to that considered in the passing off action. Peter Gibson LJ noted that
“There is no doubt but that Walton J. thought that this Court had decided that both AB and BB were entitled to use the name Budweiser of which both were proprietors. His decision was based on that premise. His conclusion that BB was entitled to obtain registration of the trade mark BUD as a contraction of Budweiser, if correct, necessarily entails that BB is also entitled to obtain registration of the unabbreviated trade mark Budweiser. There was no appeal by AB from that decision and [Counsel for AB] does not dispute that it is binding on AB”.
The Court decided that AB had made out its objection under section 11 (that BB's use of the Budweiser mark might cause confusion) but that the case also fell within section 12(2) of the 1938 Act because of BB's honest concurrent use since 1973 and/or special circumstances arising from the earlier litigation (which had established shared entitlement to the goodwill and shared entitlement to the trademark “Bud”). Accordingly both AB and BB could register the mark. In dismissing the appeal Judge LJ commended the decision below as “focused on the practical realities, at least in part consequent upon the sensible application of the previous decisions of the Court of Appeal and Walton J.”.
Any hope that judicial determination of the “passing off” claim and of the right to register the mark “Budweiser” in its full form and in its contracted form “Bud” would put an end to the litigation was shortlived. The Trade Marks Act 1994 afforded further possibilities.
Section 5(1) of the 1994 Act provides that a trademark shall not be registered
“if it is identical with an earlier trademark and the goods or services for which the trademark is applied for are identical with the goods or services for which the earlier mark is protected.”
Section 6(1) of the 1994 Act defines “an earlier trademark” as “a registered trademark….. which has a date of application for registration earlier than that of the trademark in question, taking account (where appropriate) of the priorities claimed in respect of the trademarks”. In this case it was not suggested that the qualification had any application to the issues on appeal: accordingly AB's registration of “Budweiser” is “an earlier trademark” in comparison with that of BB for the purposes of the 1994 Act (even though both were actually registered on the same day).
Section 5(2) of the 1994 Act enlarges upon the preceding subsection and provides that a trademark shall not registered if (because it is identical with an earlier trademark and is to be registered for goods similar to those for which the earlier mark is protected) there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark.
If a mark is registered then section 40(3) of the 1994 Act provides that it shall registered “as of the...
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