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 claimants was invalid, being later in time, though on the same day.
Held: No abuse had been shown: ‘People are entitled to use the rules of substantive and procedural law to their best advantage.’ and ‘Merely to use the process cannot be an abuse of it.’ No estoppel was made out.
Nevertheless, there was a question for the European Court to resolve as to the meaning of ‘acquiescence’ in a case of honest concurrent use, and a question was referred accordingly.
Ward LJ, Jacob LJ, Warren LJ
[2009] EWCA Civ 1022, [2010] RPC 7, (2010) 33(1) IPD 33003
Bailii
Trade Marks Directive 89/104, Trade Marks Act 1994
England and Wales
Citing:
See Also – 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. . .
See Also – Anheuser-Busch Inc v Budejovicky Bodvar Narodni Podnik; Budejovicky Bodvar Narodni Podnik v Anheuser-Busch CA 7-Feb-2000
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 . .
See Also – Podnik v Anheuser-Busch Inc CA 29-Oct-2002
. .
See Also – Anheuser-Busch Inc v Budejovicky Budvar CA 1984
The plaintiff sold the well-known ‘Budweiser’ beer in the US, but it was not generally available in the UK, being sold in American military bases and in a few duty-free shops. However, the beer was widely known throughout the UK because of the . .
Cited – General Electric Co v General Electric Co Ltd; GE TM; Re GE Trade Mark HL 1972
Lord Diplock said: ‘The common law of trade marks before 1875
The use by manufacturers of distinctive marks upon goods which they had made is of very ancient origin, but legal recognition of trade marks as a species of incorporeal property was . .
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
. .
Cited – Taylors Fashions Ltd v Liverpool Victoria Trustees Co Ltd ChD 1981
The fundamental principle that equity is concerned to prevent unconscionable conduct permeates all the elements of the doctrine of estoppel. In the light of the more recent cases, the principle ‘requires a very much broader approach which is . .
Cited – Habib Bank Ltd v Habib Bank AG Zurich CA 1981
A combination of defences based on delay was pleaded in a passing off action objecting to the use of a name which the defendants had been using without objection for many years. A permanent injunction was claimed.
Held: Oliver LJ said as to . .
Cited – Johnson v Gore Wood and Co HL 14-Dec-2000
Shareholder May Sue for Additional Personal Losses
A company brought a claim of negligence against its solicitors, and, after that claim was settled, the company’s owner brought a separate claim in respect of the same subject-matter.
Held: It need not be an abuse of the court for a shareholder . .
Cited – Wilmott v Barber ChD 19-Jun-1880
The lessee of three acres of land agreed in January, 1874, to let one acre to the Plaintiff for the whole of the residue of his term, and he agreed also to sell to the Plaintiff his interest in the whole three acres at any time within five years . .
Cited – Gerolsteiner Brunnen v Putsch ECJ 7-Jan-2004
There was a conflict between the registered mark Gerri (for inter alia mineral water) and an alleged infringement ‘Kerry Spring’ for Irish mineral water from the Kerry Spring sold by a company called Kerry Spring Water. The referring court held . .
Cited – Sunrider Corporation (T/A Sunrider International) v Vitasoy International Holdings Ltd ChD 22-Jan-2007
An application had been made to have the trade mark declared invalid. The owner replied saying that the five year period during which a mark might be challenged had expired.
Held: The five year period commenced not from the date when the . .
Lists of cited by and citing cases may be incomplete.
Updated: 20 September 2021; Ref: scu.376206
