The registration of two trade marks (‘Budweiser’) with the identical names was against the Act since it would appear to encourage the very confusion the Act sought to avoid. Nevertheless, where there was genuine honest concurrent use, that use might justify registration. Clause 12 of the Act clearly envisaged honest concurrent use. Here the name Budweiser had been honestly applied historically for many years by more than one supplier.
Held: Both appeals were dismissed. Peter Gibson LJ said: ‘there is a real tangible danger that to drop the name Budvar from Budweiser Budvar for BB’s beer would be likely to increase the existing inevitable confusion of that beer with the more widely marketed and better known beer of AB. If one leaves section 12(2) aside, that is not something to be encouraged. I cannot accept that section 2, merely by preserving rights to sue in passing off, can convert what is otherwise an application objectionable because of the likelihood of deception and confusion into one which cannot be defeated by section 11. The section 11 test must be applied regardless of section 2. Subject to section 12(2) therefore, in my judgment the objection under section 11 is made out.’
Judges:
Peter Gibson LJ, Ferris J, Judge LJ
Citations:
Times 14-Mar-2000, [2000] EWCA Civ 30
Links:
Statutes:
Jurisdiction:
England and Wales
Citing:
Appeal from – Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik; Budejovicky Budvar Narodni Podnik v Anheuser Busch Inc ChD 20-May-1998
It is possible to grant two identical trade marks in respect of beer where either there was no confusion, or an honest concurrent use could justify such double registrations. . .
Cited – Erven Warnink Besloten Vennootschap v J Townend and Sons (Hull) Limited (‘Advocaat’) HL 1979
The trademark was the name of a spirit-based product called ADVOCAAT. The product had gained a reputation and goodwill for that name in the English market and the defendants were seeking to take advantage of that name by misrepresenting that their . .
Cited – Re Dunn’s Trade Mark 1890
Section 11 raises a matter between the applicant and the public, and therefore any member of the public can rely on it. . .
Cited – BUD Trade Mark 1988
The applicant sought to register the mark ‘BUD’ as a trade mark in class 32 for beer. Objection was made under section 11. The parties had each disputed previously the others sales of beers under the name ‘Budweiser’.
Held: The opposition . .
Cited – Anheuser-Busch v Budejovicky Budvar CA 1984
The parties disputed the use of the name Budweiser for the beers which each sold.
Held: Neither party was entitled to an injunction. neither AB nor BB was disentitled to use the name Budweiser since in 1979 there was a dual reputation and . .
Cited – Saunders v Sun Life Assurance Co. of Canada 1894
Even though the defendant’s customers habitually and understandably used an abbreviation of the defendant company’s name, the defendant was not entitled to use the name ‘The Sun’ or ‘the Sun Life’ without the addition of the words ‘of Canada.’ . .
Cited – My Kinda Town Ltd v Soll CA 1983
The appeal succeeded. Where there is already a substantial potentiality for confusion of two businesses simply by reason of their being engaged in the same trade, a trader cannot legitimately build on and increase that trade potentiality in such a . .
Cited – GE Trade Mark HL 1973
A trade mark must be ‘distinctive’, it must be recognisable by a buyer of goods to which it has been affixed as indicating that they are of the same origin as other goods which bear the mark and whose quality has engendered goodwill. Trade Marks . .
Cited – Parker Knoll Ltd v Knoll International Ltd CA 1961
The plaintiff owned the registered trade mark ‘Parker Knoll’. The court held that the plaintiff was not entitled to register additionally the single word ‘Knoll’ because the evidence suggested that a number of people took it to refer to the goods of . .
Cited – Pirie’s Application 1933
Lord Tomlin considered how the Registrar of Tade Marks should exercise his discretion as to potentially confusing trade marks: ‘In my opinion, when once the two factors, viz., the previous registration of the Appellants’ mark and the Respondents’ . .
Cited by:
See Also – Podnik v Anheuser-Busch Inc CA 29-Oct-2002
. .
See Also – Anheuser-Busch v Budejovicky Budvar, narodni podnik ECJ 16-Nov-2004
Agreement establishing the World Trade Organisation – Articles 2(1), 16(1) and 70 of the TRIPs Agreement – Trade marks – Scope of the proprietor’s exclusive right to the trade mark – Alleged use of the sign as a trade name. . .
See Also – Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc ChD 19-Feb-2008
. .
See Also – Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc CA 20-Oct-2009
The parties had long disputed the use of the trade marks ‘Bud’ and ‘Budweiser’ for their beers. The claimant now said that the defendants had made an abusive registration under the 1994 Act, by requesting a declaration that the registration by the . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 31 May 2022; Ref: scu.147063