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Bud - now the truth can be told, Part II

By Jeremy

The three best publishable summaries of the latest outbreak of Bud-related litigation in the UK (see earlier postings here and here) are these. The interesting thing in this exercise is to see how different issues appear to be of key importance to different authors.

Aaron Wood (Simmons & Simmons): "Anheuseur-Busch applied for the mark BUDWEISER in 1979. Budejovicky Budvar did the same in 1989. They largely covered identical goods. As a result of earlier proceedings, both applications were permitted to proceed under the 1938 Act because of shared goodwill and equal right to the mark.

Four years and 364 days after the registration of the two marks, AB applied to invalidate BB's registration under the 1994 Act on the basis of their earlier ?1989? registration. The power under the 1938 Act to accept the mark no long existed. The Court upheld the invalidation of BB's registration, since statutory acquiescence occurs where over five years have passed since registration. They rejected the argument of a ?common law? acquiescence, or estoppal either by acquiescence or abuse of process, since invalidity had not previously been available to AB and earlier decisions had only addressed BB's ability to use the term BUDWEISER".

Edward Smith (UKIPO): "In 1979, A registered ?Budweiser?. In June 1989, B applied for the same mark. Both were registered on 19 May 2000 as the courts decided both companies were entitled to ?shared goodwill?.

The law changed and A applied to invalidate B?s mark as their mark was an ?earlier mark?. B said A had acquiesced for so long that legally they could no longer win. Nor was it fair, and what?s more, A were taking the mickey out of the whole procedure.

The judge had to agree with A. The acquiescence ran from registration, not B?s use. A didn?t acquiesce at all; they had given no hint to B they would not apply to invalidate. They were not taking the mickey, merely taking advantage of an unforeseen change in the law.

The judge did however say that the specifications weren?t identical, so he let B have malt beverages as small consolation".

Alex Batteson (Linklaters): "Budweiser Budvar?s appeal against UKIPO?s decision that its registration of ?Budweiser? was invalid given Anheuser-Busch?s earlier applied-for identical mark dismissed insofar as they covered identical goods, ?beer, ale, porter? (but allowed for ?malt beverages?). Budvar?s earlier registration was result of judicial determination (in 2000) - this now irrelevant, given basis of registration, ?honest concurrent use?/?special circumstances?, unrecognised by the Trade Marks Directive/1994 Act.

No statutory five-year acquiescence by Anheuser-Busch in use of mark by Budvar: acquiescence period begins with later mark?s registration (not application) date. But not acte claire. No common law estoppel by acquiescence (Anheuser-Busch unable to enforce rights until became earlier mark proprietor (19/5/2000)) or abuse of process (impossible to raise 1994 Act invalidity issues in earlier 1938 Act proceedings).

Art. 16 TRIPs (TM rights not to prejudice previous rights) not applicable: later mark not a prior right; but might help Budvar later if Anheuser-Busch sues for infringement".

The prize-winning entry, alas, can't be published. It's a cheeky one-liner from a lawyer who acted for one of the Buds in these proceedings, who has a sharp sense of humour and would probably get into all sorts of trouble if the winning entry were published ...

Full post as published by IPKat on March 03, 2008 (boomark / email).