98 Budejovický Budvar, národní podn

98 Budejovický Budvar, národní podnik v Anheuser-Busch Inc
(Case C-482/09)
Court of Justice of the European Union
President of Chamber A Tizzano, M Ilešic, E Levits, M Safjan, M Berger, and V Trstenjak
2010 Nov 24; 2011 Feb 3; Sept 22
Trade mark—Registration—Acquiescence—Application to invalidate registration of mark on grounds of
similarity with earlier mark—Statutory provision disentitling proprietor of earlier mark to relief after five
years' acquiescence in use of registered trade mark—Meaning of “acquiesced”—Date of commencement of
five-year period—Whether period running if earlier mark not registered—Whether earlier mark prevailing
even after long period of honest concurrent use of two identical marks— Council Directive 89/104/EEC, arts
4, 9
The claimant and the defendant were breweries established respectively in the Czech Republic and the
United States of America. From the early 1970s they both distributed beers in the United Kingdom under a
trade mark that consisted of, or included, the word “Budweiser”. In 1976 the claimant applied to register the
mark “Bud”. In December 1979 the defendant applied to register “Budweiser”. The claimant opposed the
defendant's application and, in June 1989, made a cross-application to register the same mark, which the de-
fendant opposed. In February 2000, the Court of Appeal dismissed the application and cross-application, fol-
lowing which, on 19 May 2000, both parties were entered as proprietors of the “Budweiser” mark under the
Trade Marks Act 1938 . The 1938 Act expressly permitted the simultaneous registration of identical or con-
fusingly similar marks in cases of honest concurrent use. Meanwhile the Trade Marks Act 1994 , which en-
acted in English law the Trade Marks Directive 89/1041 , replaced the 1938 Act. Article 4 of the Directive
provided that a registered trade mark would be declared invalid if it was identical to an earlier trade mark
and the goods for which it was applied were identical with the goods for which the earlier trade mark was
protected. However, by article 9 if the proprietor of the earlier mark had acquiesced for a period of five suc-
cessive years in the use of the later mark he was no longer entitled to a declaration that the later mark was
invalid. On 18 May 2005, four years and 364 days after the registration of the parties' “Budweiser” marks,
the defendant applied to the Trade Marks Registry for a declaration of invalidity of the claimant's registra-
tion of the mark. That application was premised on the ground that, by virtue of its earlier application, its
mark was an “earlier trade mark” for the purposes of article 4 ; that the marks and goods were identical; and
that it had not been deprived by article 9 of its entitlement to a declaration, since the five-year period of ac-
quiescence specified therein had not expired at the time of the application. The timing of the application was
such that it was not served on the claimant until after the five-year period had expired, thereby disabling the
claimant from making a cross-application based on its earlier trademark “Bud”. The Trade Marks Registry
granted the declaration sought by the defendant and the High Court upheld that decision. On the claimant's
appeal the following questions were referred to the Court of Justice of the European Union. (1) What was
the meaning of “acquiesced” for the purposes of article 9(1) of the Trade Marks Directive ? (2) When did
the period of five successive years commence for the purposes of article 9 ? (3) Did article 4(1)(a) enable the
proprietor of an earlier *299 trade mark to prevail even where there had been a long period of honest con-
current use of two identical trade marks for identical goods?
On the reference—
Held , (1) “acquiescence” within the meaning of article 9(1) of Council Directive 89/104 constituted a
concept of European Union law, the meaning and scope of which had to be identical in all member states;
that a person who acquiesced remained inactive when faced with a situation which he was in a position to
oppose; and that, therefore, a proprietor of an earlier trade mark did not acquiesce for the purposes of article
9(1) if he was not in any position to oppose the use by a third party of a later trade mark identical with his
own (post, judgment, paras 37, 44–45, 50; operative part, para 1).
(2) That the prerequisites for the running of the five-year period of acquiescence under article 9 were, first,
registration of the later mark in the member state concerned, secondly, the application for registration of that
mark being made in good faith, thirdly, use of the later trade mark by its proprietor in the member state
where it had been registered and, fourthly, knowledge by the proprietor of the earlier mark that the later
mark had been registered and used after its registration; that where those conditions were satisfied, however,
the fact that the earlier mark had not been registered did not prevent the five-year period from running (post,
judgment, paras 53, 56–59, 62; operative part, para 2).
(3) That a later registered trade mark was likely to be declared invalid pursuant to article 4(1)(a) of the Dir-
ective where its use had or was liable to have an adverse effect on the essential function of the trade mark,
namely to guarantee to consumers the origin of the goods; that a long period of honest concurrent use of two
identical marks designating identical products neither had nor was liable to have an adverse effect on the es-
sential function of the trade mark; and that, accordingly, in those circumstances, the proprietor of the earlier
mark could not obtain the cancellation of the later mark (post, judgment, paras 74, 82, 84; operative part,
para 3).
The following cases are referred to in the judgment:
• American Clothing Associates NV v Office for Harmonisation in the Internal Market (Trade Marks and
Designs) (OHIM) (Joined Cases C-202/08P and C-208/08P) [2009] ECR I-6933; [2010] ETMR 22 , ECJ
• Anheuser-Busch Inc v Budejovický Budvar, národní podnik (trading as Budweiser Budvar Brewery)
[1984] FSR 413, CA
• Ansul BV v Ajax Brandbeveiliging BV (Case C-40/01) [2005] Ch 97; [2004] 3 WLR 1048; [2003] ECR I-
2439; [2003] RPC 717; [2003] ETMR 1032 , ECJ
• Budejovický Budvar, národní podnik v Anheuser-Busch Inc [2008] EWHC 263 (Ch); [2008] RPC 480;
[2009] EWCA Civ 1022; [2010] RPC 173, CA
• Budweiser Trade Marks, In re [2000] RPC 906, CA
• Cartesio Oktató és Szolgáltató bt, Application brought by (Case C-210/06) [2009] Ch 354; [2009] Bus LR
1233; [2009] 3 WLR 777; [2009] All ER (EC) 269; [2008] ECR I-9641; [2010] 1 BCLC 523 , ECJ
• Coty Prestige Lancaster Group GmbH v Simex Trading AG (Case C-127/09) [2010] ETMR 703; [2010]
FSR 875 , ECJ
• Davidoff (Zino) SA v A & G Imports Ltd (Joined Cases C-414/99 to C-416/99) [2002] Ch 109; [2002] 2
WLR 321; [2002] All ER (EC) 55; [2001] ECR I-8691; [2002] RPC 403; [2002] ETMR 109 , ECJ
• Develey Holding GmbH & Co Beteiligungs KG v Office for Harmonisation in the Internal Market (OHIM)
(Case C-238/06P) [2007] ECR I-9375; [2008] ETMR 367 , ECJ
• dos Santos Palhota, Criminal Proceedings against (Case C-515/08) [2011] 1 CMLR 1103 , ECJ*300
• Easycar (UK) Ltd v Office of Fair Trading (Case C-336/03) [2005] All ER (EC) 834; [2005] ECR I-1947 ,
ECJ
• Ekro BV Vee— en Vleeshandel v Produktschap voor Vee en Vlees (Case 327/82) [1984] ECR 107 , ECJ
• Federación de Servicios Públicos de la UGT v Ayuntamiento de la Línea de la Concepción (Case C-
151/09) [2010] ICR 1248 , ECJ
• Google France Sarl v Louis Vuitton Malletier SA (Joined Cases C-236/08 to C-238/08) [2011] Bus LR 1;
[2011] All ER (C) 411; [2010] ECR I-2417; [2010] RPC 569; [2010] ETMR 503 , ECJ
• LTJ Diffusion SA v Sadas Vertbaudet SA (Case C-291/00) [2003] ECR I-2799; [2003] FSR 608; [2003]
ETMR 1005 , ECJ
• Levi Strauss & Co v Casucci SpA (Case C-145/05) [2006] ECR I-3703; [2007] FSR 170; [2006] ETMR
988 , ECJ
• L'Oréal SA v Bellure NV (Case C-487/07) [2010] Bus LR 303; [2010] All ER (EC) 28; [2009] ECR I-
5185; [2010] RPC 1; [2009] ETMR 987 , ECJ
• Luxembourg, State of the Grand Duchy of v Linster (Case C-287/98) [2000] ECR I-6917 , ECJ
• Padawan SL v Sociedad General de Autores y Editores de España (SGAE) (Case C-467/08) [2011] FSR
416 , ECJ
• R (International Air Transport Association) v Department of Transport (Case C-344/04) [2006] ECR I-403
, ECJ
• Silhouette International Schmied GmbH & Co KG v Hartlauer Handelsgesellschaft mbH (Case C-355/96)
[1999] Ch 77; [1998] 3 WLR 1218; [1998] All ER (EC) 769; [1998] ECR I-4799; [1998] FSR 729; [1998]
ETMR 539 , ECJ
• Société fiduciare nationale d'expertise comptable v Ministre du Budget, des Comptes publics et de la Fonc-
tion publique (Case C-119/09) [2011] 3 CMLR 20 , ECJ
• Wallentin-Hermann v Alitalia-Linee Aeree Italiane SpA (Case C-549/07) [2009] Bus LR 1016; [2009] 1
Lloyd's Rep 406; [2008] ECR I-11061 , ECJ
REFERENCE by the Court of Appeal (Civil Division), England and Wales
By an order dated 12 November 2009, in proceedings between the claimant, Budejovický Budvar, národní
podnik, and the defendant, Anheuser-Busch Inc, the Court of Appeal (Civil Division) referred to the Court
of Justice for a preliminary ruling questions, post, judgment, para 26, on the interpretation of articles 4(1)(a)
and 9(1) of Directive 89/104 concerning the meaning of “acquiescence” and whether the period of limitation
in consequence of acquiescence could start running before the proprietor of the earlier trade mark had re-
gistered its trade mark and, if so, what were the prerequisites for the running of that time period.
The Judge Rapporteur was Judge M Safjan. The facts are stated in the judgment of the court.
J Mellor and S Malynicz (instructed by M Blair ) for Budejovický Budvar, národní podnik.
B Goebel for Anheuser-Busch Inc.
M Smolek ,