Trade mark decision

BL Number

O/220/07

Decision date

2 August 2007

Hearing Officer

Mr M Foley

Mark

BUDWEISER

Classes

32

Applicant for Invalidation

Anheuser-Busch Incorporated

Registered Proprietor

Budgjovicky Budvar, Narodni Podnik

Invalidity

Section 47(2)(a) based on Sections 5(1) & 5(2)(b)

Result

Section 47(2)(a) based on Section 5(1): Application allowed. Section 47(2)(a) based on Section 5(2)(b): Application failed.

Points Of Interest

• An unusual case and this decision is likely to be appealed - probably to the High Court if history is anything to go by.

Summary

There has been a long running dispute between these two party’s dating back to the early 1980’s. The mark in suit was applied for on 28 June 1989 and was opposed by the current applicant all the way to the Court of Appeal, who allowed registration under Section 12 of the 1938 Trade Marks Act (as amended). The application for invalidation was filed on 18 May 2005 which was within five years from the date of registration of the mark in suit.

Both parties filed evidence which consisted essentially of a statement of use of the respective marks. The applicant claimed use from 1974 and the registered proprietor from 1973.

As regards the issue of Cause of Action/Issue Estoppel the Hearing Officer determined that the applicant was not debarred from making the application for invalidity even though it had been unsuccessful in its opposition.

As regards the matter of acquiescence the Hearing Officer noted that there was a clear distinction between English Common Law and the wording of the Directive on which the 1994 Act is based. As a consequence the procedures outlined in the Directive had to be followed and the defence claimed in the counterstatement be dismissed. As the mark in suit had not been a registered mark for a period of five years when the application was made the provisions of Section 48(1) (acquiescence) could not be of assistance to the registered proprietor.

The matter of abuse of process was also considered in detail but the Hearing Officer concluded that, as these are new proceedings and not a continuation of existing proceedings, the making of an application for invalidation was not an abuse of process.

The Hearing Officer went on to apply the provisions of Section 5(1) of the 1994 Act taking account of the fact that the applicant had a registration of an identical mark for identical goods. Invalidation allowed.

The ground under Section 5(2)(b) failed as the applicant did not provide “proof of use” in relation to its BUD mark relied upon in the application.

Full decision O/220/07 73Kb