Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc (BUD and BUDWEISER BUDBRAU Trade Mark Revocation)
Date
29 October 2002
Legislation
Trade Marks Act 1994 s46
Keywords
trade mark revocation; scope of appeal; non-use of trade mark for revocation
Counsel
Michael Bloch QC, Michael Edenborough for Anheuser-Busch Inc, James Mellor for Budejovicky
Solicitors
Macfarlanes; Blair & Co.
Judge
Lord Walker of Gestingthorpe, Pill LJ and Sir Martin Nourse
Court
Court of Appeal (Civil Division)
Reported
[2003] RPC 25
Summary
The Budweiser Budbräu and Bud marks were both registered in Class 32 in respect of beer, ale and porter in 1960 and 1976 respectively. BB claimed that the Budweiser Budbräu device was used in block capitals as part of the neck sticker of the bottle in a wax seal design. The sticker contained the words 'Budweiser Budbräu' but in a different typeface and running around the edge of the seal design. BB also claimed that the Bud device was used on a number of beer mats supplied to the UK where it appeared as part of the sequence 'Bud…Budweis…Budweiser'. They further asserted that both marks were used as part of the border frieze of their invoices but in a different typeface. The frieze comprised a number of marks all in block capitals including Budweiser, Budweiser Budvar, Budweiser Budbräu, and Bud. AB applied to revoke both of the marks on the basis of non-use.
Both cases concerned the proper interpretation of s46 of the Trade Marks Act 1994 which permits, among other things, the revocation of marks that have not been put to genuine use in the United Kingdom within five years of their registration. The key issue that fell before Simon Thorley QC sitting as a Deputy Judge of the High Court on appeal from the Trade Marks Registry was how to interpret the phrase in s46(2) that 'use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered'.
Simon Thorley QC held that where a word mark is registered in a particular graphical form, i.e. a special script, then the distinctiveness of the mark will fall to be assessed not only on the basis of the distinctiveness of the word per se, but also on the distinctiveness of the particular stylisation used in the registration. The judge identified several elements that contributed to the overall distinctiveness of the Budweiser Budbräu mark including: the word Budweiser; the word Budbräu; the specific fonts used; the contrast in fonts; and the spatial relationship of the two words - 'one being above the other and following behind the enlarged B of Budbräu'.
He held that because s46(2) does not employ a phrase such as 'substantially alter' it was of narrow scope and that accordingly any tribunal applying s46(2) must determine the distinctive character of the mark in suit and then address the question of whether the alterations of any of those elements in the mark as used are sufficiently small so as not to alter that overall distinctive character.
BB claimed that the right-hand mark was used in two different ways - on the neck label of the bottle as part of a seal device in plain script, and on the boarder of invoices in plain text. Simon Thorley QC held that various graphical elements were missing in each of these uses and so the mark should be struck off the register.
The 'Bud' mark was used on beer mats as part of the sequence 'Bud - Budweis - Budweiser'. This was held to be use of the mark Bud in its own right despite submissions from AB that it was use as part of an advertising strap line, and not use in connection with beer. It was further held that it did not matter that a product named 'Bud' did not exist because it was a diminutive name that was used in relation to the goods themselves, and was thus being used as a trademark in relation to those goods. Simon Thorley QC also stated that it was significant that the 1994 act does not draw a distinction between primary or secondary types of usage. He stated that affixing a mark to goods is only one of many uses to which a trade mark can be put, as s10(4) makes clear in the context of infringement.
Decision
On a further appeal to the Court of Appeal the decision of Simon Thorley QC was overturned and the Hearing Officer's findings restored predominantly on the grounds that an appeal court (including Simon Thorley QC hearing the first appeal) should not interfere with findings of fact by the first instance tribunal. Lord Walker of Gestingthorpe in his judgment even remarked that, despite the fact that the findings of Simon Thorley QC were to be preferred, the original findings of the Hearing Officer should not be overturned.
In relation to the quantitative thresholds for revocation for revocation for non-use see Ansul v Ajax (European Court of Justice) and Laboratoire de la Mer (Court of Appeal).