Trademark lawyers at Marks & Clerk have succeeded in the latest round of the so-called Bud Wars litigation by fending off attempts by a US brewery to ban Czech rival Budějovický Budvar from using the Budweiser name.
Partners Mark Blair and Kirsten Gilberthave acted for Budvar in the long-running case, with James Mellor QC of 8 New Square and Simon Malynicz of 3 New Square Chambers representing the client in the Court of Appeal (CoA).
This morning the CoA ruled against Anheuser-Busch InBev, makers of the US Budweiser beer, which wanted to deprive Budvar of the right to use the Budweiser name in the UK.
Anheuser-Busch instructed Macfarlanes partner Geoff Steward withMichael Bloch QC and Harris Bor, both of Wilberforce Chambers, representing the drinks giant in court.
The long history of the dispute in the high-value UK drinks market has included litigation back and forth between the brewers over the rights to the registered trademark, including accusations that Budvar was “passing off” its product by trading on the Budweiser brand.
Neither party was stopped from using the trademark until changes in the Trademarks Act. Despite both registering Budweiser on the same day, Anheuser-Busch tried to take advantage of the fact that it filed first – 1976 compared to 1989 – to apply to invalidate Budvar’s trademark.
The case has been disputed through various UK courts and was heard by the CoA in May. Judges had sought guidance from the Court of Justice of the European Union on how to interpret its EU-wide trademark law before ruling.
Budvar’s trademark rights remained in place during the lengthy litigation.
Today’s judgment and the CoA’s subsequent refusal to give Anheuser-Busch permission to appeal means that Anheuser-Busch will have to apply directly to the UK Supreme Court for the option to hear the case at the highest level. It is expected that the company will seek to do that.
A ruling in favour of the larger US Budweiser producer would have had huge financial implications for the smaller Czech brewer as it would likely have meant a Budvar withdrawal and product rebrand in the UK.
Marks & Clerk’s Blair said: “This decision confirms what, in our opinion, is obvious following the favourable ruling of the Court of Justice of the European Union in September last year. That as a result of the decades-long honest use of the mark Budweiser by both Budvar and Anheuser-Busch in the UK, both parties should be entitled to a trademark registration.
“Today’s judgment allows the trademark register to reflect the reality of the situation in the marketplace – that both brands co-exist and have done so for many years.
“It’s a further example of how trademark law must be interpreted within its commercial context; that even in cases of so-called ‘double identity’ – where the same mark is used in respect of the same goods – it’s still necessary to demonstrate an adverse effect on the ability of the trademark to function as an indication of origin.”
A statement from Anheuser-Busch InBev said that the ruling was “disappointing”, but insisted it did not impact on the company’s “strong and unchallenged” UK trademark rights.