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Friday, 27 November 2009

"Stealing a march": now we know the Bud Questions

On 20 October the Court of Appeal, England and Wales, decided that in order to resolve one of the more curious disputes between the American and Czech versions of Budweiser for hegemony over all things Bud (see IPKat note here on that decision) it was necessary to refer to the Court of Justice of the European Communities a number of questions relating to the meaning of the concept of acquiescence within the context of Article 9(1)(a) of the trade mark directive.

Right: Budweis, the home of the Czech Republic's greatest export -- beer litigation


At the time, the questions favoured by the Court were these:
"1. What is meant by “acquiesced” in Article 9(1) and in particular:

(a) can the proprietor of a trade mark be held to have acquiesced in a long and well-established honest use of an identical mark by another when he has long known of that use but has been unable to prevent it?
(b) is it necessary that the proprietor of a trade mark should have his trade mark registered before he can begin to “acquiesce” in the use by another of (i) an identical or (ii) a confusingly similar mark?

2. When does the period of “five successive years” commence and in particular, can it commence (and if so can it expire) before the proprietor of the earlier trade mark obtains actual registration of his mark; and if so what conditions are necessary to set time running?

3. Does Art 4(1)(a) apply so as to enable the proprietor of an earlier mark to prevail even where there has been a long period of honest concurrent use of two identical trade marks for identical goods so that the guarantee of origin of the earlier mark does not mean the mark signifies the goods of the proprietor of the earlier and none other but instead signifies his goods or the goods of the other user?".
In the event, having heard submissions and given further thought to the matter, the Court of Appeal has drafted the following questions for that preliminary ruling:
"1. What is meant by “acquiesced” in Article 9(1) [that's the same as before] ... and in particular:

(a) is "acquiesced" a community law concept or is it open to the national court to apply national rules as to acquiescence (including delay or long-established honest concurrent use) [this is new -- and it's a real killer since it exposes the partial and inadequate nature of existing harmonisation provisions as well as the risk of leaving a legal vacuum which might just be filling by a ruling of IP amateurs]

(b) if "acquiesced" is a community law concept can the proprietor of a trade mark be held to have acquiesced in a long and well- established honest use of an identical mark by another when he has long known of that use but has been unable to prevent it? [If this question has to be answered, the IPKat predicts a Delphic response along the lines of "it's up to the referring court to apply its own law to the facts".]

(c) in any case, is it necessary that the proprietor of a trade mark should have his trade mark registered before he can begin to “acquiesce” in the use by another of (i) an identical or (ii) a confusingly similar mark?

2. When does the period of “five successive years” commence and in particular, can it commence (and if so can it expire) before the proprietor of the earlier trade mark obtains actual registration of his mark; and if so what conditions are necessary to set time running?

3. Does Art 4(1)(a) of Council Directive 89/104/EEC apply so as to enable the proprietor of an earlier mark to prevail even where there has been a long period of honest concurrent use of two identical trade marks for identical goods so that the guarantee of origin of the earlier mark does not mean the mark signifies the goods of the proprietor of the earlier and none other but instead signifies his goods or the goods of the other user?".

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