“Common sense prevails” as brands share Budweiser name

 Anheuser-Busch approached the case 'on the wrong legal basis'

The Court of Appeal has rejected an attempt by Anheuser-Busch (AB), maker of the US Budweiser beer to deprive its Czech rival Budejovicky Budvar (BB) of the right to use the ‘Budweiser’ name.

Budvar and Anheuser-Busch have used the word ‘Budweiser’ to market their beers in the UK for more than 30 years, with the former entering the market in 1973, followed by Anheuser-Busch in 1974.

Giving the leading judgment at the Court of Appeal in Budejovicky Budvar Narodni Podnik v Anheuser-Busch [2012] EWCA 880, Sir Robin Jacob said: “Common sense prevails here. These two brands have lived side by side for many many years in different get-ups, prices and taste and with large sales: the sales of AB’s beer are much greater than BB’s but the latter are substantial.

“You do not have to be a genius to infer from those very facts alone that the public by and large will have got used to that. Or that there will always be some who are confused, albeit that many are not.”

Sir Robin said that and it was quite clear that “honest concurrent use was somehow in play”, though it was fair to say that exactly how was “obscure at best”.

He allowed BB’s appeal. Lord Justice Ward agreed, as did Mr Justice Warren, for his own reasons.

In September last year the ECJ ruled in case C-482/09 that British consumers were sufficiently aware of the difference between Budvar’s and Anheuser’s beers that the use by both of the same trade mark would not cause any confusion.

In February 2000, the High Court ruled that both companies should be allowed to register the word Budweiser.

The Luxembourg judges said a trademark could be considered to be earlier without having been registered if it was “well known”.

They also held that a later registered trademark could only be declared invalid if it had or was liable to have an adverse effect on the essential function of the earlier trademark, that is, to guarantee to consumers the origin of the goods covered.

In the circumstances, the court said, both companies had been using the same mark in good faith concurrently for more than 30 years before registration but consumers were aware that their products were different.

“Consumers are well aware of the difference between Budvar’s beers and those of Anheuser-Busch, since their tastes, prices and get-ups have always been different,” the judges said.

“Even though the trademarks are identical, the beers of Anheuser-Busch and Budvar are clearly identifiable as being produced by different companies.”

As a result, Budvar’s registration in the UK of the later Budweiser mark need not be declared invalid.

Mark Blair, partner at Marks & Clerk solicitors, who acted for Budvar, said: “Today’s judgment is confirmation of Budvar’s right to the ‘Budweiser’ name in the UK.

“It is a further example of how trade mark law must be interpreted within its commercial context so that even in cases of so-called ‘double identity’, where the same mark is used in respect of the same goods, it is still necessary to demonstrate an adverse effect on the ability of the trade mark to function as an indication of origin.”