Seeing Double? Honest Concurrent Use Of The Budweiser Trademark

Two companies have been using the "Budweiser" brand in the UK for decades. Liane Bylett in our Commercial Disputes Team looks at the latest battle over the "Budweiser" trademark concerning the issue of honest concurrent use. This case is a good example of how delay in taking action in respect of an identical trademark can impact upon your ability to challenge the registration, particularly in circumstances where there is little evident likelihood of confusion. If two identical brands co-exist for a long period of time, with little or no impact on each other's business, then honest concurrent use may arise with both parties obtaining equal rights to use the mark. It is therefore very important to police your trademarks and IP to ensure that swift action can be taken. Background American company, Anheuser-Busch Inc (AB), and Czech company, Budejovicky Budvar Narodni (BB), have both sold beer in the UK under the name "Budweiser" since the 1970s. Perhaps unsurprisingly there has been a long-standing legal wrangle between the parties over the trademark. Eventually, in 2000, the Court of Appeal held that both AB and BB were permitted to register "Budweiser" as a trademark in the UK because there was "honest concurrent use" of the mark by both companies i.e. both had been simultaneously using the name for a long period of time without any adverse effects. However in 2005 AB applied for an order under Article 4(1)(a) of EU Directive 89/104 that BB's registration be declared invalid. The application was made on the basis that the marks / products are identical and AB's was an "earlier trademark" – AB's trademark application having been made in 1979, whilst BB's application was made in 1989. The Intellectual Property Office, and subsequently the High Court, declared that BB's trademark was invalid. BB appealed to the Court of Appeal. The Court of Appeal referred a number of questions to the Court of Justice of the European Union, including: "Does Article 4(1)(a) 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 ... ?" The Court of Justice of the European Union recently provided their response to the Court of Appeal's questions and the Court of Appeal applied their reasoning to the Budweiser case. Key Elements of the Decision The Court of Justice of the European Union said that the proper interpretation of the relevant law...