Budweiser Questions Referred to ECJ

27 November 2009

By Ben Evans

The long running saga of trade mark disputes between the two Budweisers has taken a further step.

Those of you that keep up to date with trade mark law cannot of missed the dispute between American brewer Anheuser-Busch and Czech beer producer Budejovicky Budvar over the use of the mark 'Budweiser'. Recently the dispute reached the English Court of Appeal whereby the Judge referred some questions of law to the ECJ for a ruling. The questions are:

1. What is meant by “acquiesced” in Article 9(1) of Council Directive 89/104/EEC and in particular:

(a) is "acquiesced" a community law concept or is it open to the national court to apply national rules as to acquiescence (including delay or long-established honest concurrent use);

(b) if "acquiesced" is a community law concept can the proprietor of a trade mark be held to have acquiesced in a long and well- established honest use of an identical mark by another when he has long known of that use but has been unable to prevent it? (c) in any case, is it necessary that the proprietor of a trade mark should have his trade mark registered before he can begin to “acquiesce” in the use by another of (i) an identical or (ii) a confusingly similar mark?

2. When does the period of “five successive years” commence and in particular, can it commence (and if so can it expire) before the proprietor of the earlier trade mark obtains actual registration of his mark; and if so what conditions are necessary to set time running?

3. Does Art 4(1)(a) of Council Directive 89/104/EEC apply so as to enable the proprietor of an earlier mark to prevail even where there has been a long period of honest concurrent use of two identical trade marks for identical goods so that the guarantee of origin of the earlier mark does not mean the mark signifies the goods of the proprietor of the earlier and none other but instead signifies his goods or the goods of the other user?

It will be some time before we get a ruling back from the ECJ, we will of course keep you updated.

Ben Evans is a trainee solicitor specialising in intellectual property and information technology law.