European Court of Justice rules concurrent use of the same Budweiser trade mark is valid.

20th December 2011

For a trade mark to be successfully registered it must be a unique word or stylised word which is used to represent specific categories of goods or services.

To prevent customers being confused as to the origin of goods or services traditionally no more than one identical or similar trade mark can be registered for the same goods or services. However in the European Court of Justice case C-482/09 the Court departed from this traditional approach by allowing two brewers to register the 'Budweiser' trade mark for the same product. The Czech brewer Budvar and the US spirit company Anheuser-Busch have both used the word 'Budweiser' to market their beers in the UK for over 30 years. Anheuser-Busch was the first company to apply for the registration of the Budweiser trade mark in Britain in 1979. Budvar then applied for registration of the same name and logo in 1989. A dispute then arose as to which company was entitled to register the Budweiser trade mark. Under the EU First Council Directive 89/104/EEC registration will not be granted or will be declared invalid if the trade mark is identical to an earlier trade mark covering the same goods or services. However the Directive provides for an exception where the owner of the earlier trade mark was aware of the use of the identical later trade mark and has allowed its use to continue undisputed for five years or more. As a result Anheuser-Busch made an application to the UK trade mark registry four years and 364 days after Budvar registered their trade mark for a declaration that Budvar's registration was invalid. In September the European Court of Justice brought an end to this long running dispute, ruling that Budvar's registration of the later trade mark need not be declared invalid. The Court held that a trade mark could only be declared invalid if it was liable to have an adverse effect on the use and function of the earlier trade mark, resulting in confusion in the eyes of consumers as to the origin of the goods or services. The Court held that although the Budweiser name and logo were identical, consumers were well aware of the difference between the products, as the beers were clearly identifiable as being produced by different companies. As a result the Court ruled that both companies are permitted to use the Budweiser trade mark. Trade marks are a good way of protecting your brand from being copied by others. However this long protracted dispute emphasises the need for companies to do their research before deciding to produce a logo and submit an application to register a trade mark. The Intellectual Property Office website allows you to search existing trade marks to avoid any duplication when designing your company's logo. If you would like more information on the use of trade marks to protect your goods or services then contact our Commercial Partner, Neil Ashford. For additional information please contact Neil Ashford of Gepp & Sons on 01245 228104 or ashfordn@gepp.co.uk The above is not legal advice; it is intended to provide information of general interest about current legal issues.