Bud back from Europe, Specs on the way there

Ashamed to admit he'd bought
the wrong Budweiser, Kevin kept
the bottles hidden behind his back

Two trade mark disputes are occupying space in this Kat's cranium right now. The first, Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc [2012] EWCA Civ 880, sees the Court of Appeal for England and Wales (Lord Justice Ward, Mr Justice Warren and Sir Robin Jacob, 3 July 2012) applying the ruling which it sought from the Court of Justice of the European Union (CJEU) in Case C‑482/09 Budějovický Budvar, národní podnik v Anheuser-Busch, Inc.  The second, C-252/12 Specsavers International Healthcare., is on its way out to the CJEU for much the same treatment.

Of the two cases, Budweiser is arguably the easy one. After the CJEU ruled that Anheuser-Busch, the proprietor of an earlier BUDWEISER trade mark could not obtain the cancellation of the registration of Budvar's identical later BUDWEISER trade mark where there had been a long period of honest concurrent use of the two marks and that use neither had nor was liable to have an adverse effect on the essential function of the trade mark, the Court of Appeal ruled that both peddlers of BUDWEISER beer could carry on doing so concurrently, as they had done before. There was actually a bit more to it than that: the Court of Appeal was asked by Anheuser-Busch if it would be so kind as to remit the matter to the Trade Marks Registry to investigate whether letting the later registration remain alive would have an adverse effect on the essential function of its earlier mark. Said the Court of Appeal, in varying shades of politeness, "no".

Delivering the first and longest judgment at the request of Lord Justice Ward, Sir Robin Jacob noted that the CJEU did not rule that only de minimis levels of confusion were acceptable when there was honest concurrent use and that it was wrong to suggest that, where there was long-established honest concurrent use, the mark of each party had to provide a guarantee of origin in itself and not in its competitor. This was because, in a situation of long-established honest concurrent use, the guarantee of origin function of a trade mark was of a different nature to that which pertained under normal circumstances. Anheuser-Busch was perfectly entitled to object that the essential function of its mark was adversely affected -- but here it did not do so, probably because it was acting under a mistake as to the law.

Should this action then be remitted to the Registry? Sir Robin thought not. There would have to be a new trial, since Anheuser Busch had failed to put its case first time round. Coming more than seven years after Anheuser Busch pulled its dirty trick on Budvar, it would be unjust to allow Anheuser Busch to assail Budvar again.

Mr Justice Warren agreed with Sir Robin with regard to the outcome, but not the emphasis. In his view, if Anheuser Busch had evidence which enabled it to establish adverse effect, it not would be right to allow Budvar to feast on honest concurrent use point without at least giving Anheuser Busch a chance to prove adverse effect on the facts. However, before that could happen, there would have to be some sort of real evidence to that effect. In the context here, evidence of confusion on its own would be insufficient. This was because, however much evidence of confusion was adduced, it could not be sufficient to establish any impairment of the guarantee of origin in the circumstances. Anheuser Busch had known ever since the service of the grounds of appeal that Budvar was relying on honest concurrent use and it had known since the CJEU's ruling that it might need to show positive evidence of adverse effect. Even so, not a peep had hitherto been heard from the company on that issue and it was now far too late to raise it.

The IPKat deprecates the manner in which both contestants have behaved in their long-standing international dispute, which is an embarrassment for the whole IP community. We  started with two BUDWEISERS and finished with two BUDSWEISERS, which is the way it should be.

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Moving now to the second case, Mr Justice Mann got Asda's attempt to copy Specsavers' brand pretty wrong at first instance (here) and the Court of Appeal got it more or less right (here), pausing only long enough to ask the following questions concerning the meaning of Articles 9(l)(b), 9(l)(c), 15 and 51 of the Community Trade Mark Regulation (207/2009):

A. Where a trader has separate registrations of Community trade marks for

(i) a graphic device mark;

(ii) a word mark;

and uses the two together, is such use capable of amounting to use of the graphic device mark for the purposes of Articles 15 and 51 of Regulation 207/2009? If yes, how is the question of use of the graphic mark to be assessed?

B. Does it make a difference if:

(i) the word mark is superimposed over the graphic device?

(ii) the trader also has the combined mark comprising graphic device and word mark registered as a Community trade mark?

C. Does the answer to A or B depend upon whether the graphic device and the words are perceived by the average consumer as (i) being separate signs; or (ii) each having an independent distinctive role? If so, how?

"Merpel, is that you?", said the
IPKat, vainly trying to manage
without his glasses

D. Where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours such that it has become associated in the mind of a significant portion of the public (in a part but not the whole of the Community) with that colour or combination of colours, is the colour or colours with which the defendant uses the sign complained of relevant in the global assessment of (i) likelihood of confusion under Article 9(1 )(b) or (ii) unfair advantage under Article 9(1)(c) of Regulation 207/2009? If so, how?

E. If so, is it relevant as part of the global assessment that the defendant itself is associated in the mind of a significant portion of the public with the colour or particular combination of colours which it is using for the sign complained of?

We knew this already, but what we didn't know is that the UK's Intellectual Property Office would choose today to tell us that, if we -- or you, for that matter -- would like to comment on this case, thus giving the UK government a clue or two as to whether to pop a couple of barristers on to flight to Luxembourg to keep an eye on things, you should email policy@ipo.gsi.gov.uk before 18 July 2012, which is Wednesday of next week.


Q. What do you get when you cross Budweiser with Specsavers?
A. Beer goggles, here