Trade mark decision

BL Number

O/200/01

Decision date

26 April 2001

Hearing officer

Mr A James

Mark

BUD

Classes

32

Registered Proprietor

Budejovicky Budvar Narodni Podnik

Applicant for Invalidity

Anheuser-Busch Inc

Invalidation

Section 47(1) and Sections 1(1), 3(1)(c) and 3(6)

Result

Section 47(1): - Application failed.

Points Of Interest

• 1. Costs - The Hearing Officer declined to award costs significantly off the usual scale, both sides being open to criticism in their conduct of their respective cases.
• 2. The applicant for invalidation appealed the decision to the High Court. Registered proprietor’s appealed re costs award. The applicant’s appeal abandoned on the day before the Hearing. This case heard with BL O/071/01 (Revocation of the mark BUD) and BL O/178/01 (Revocation of the mark BUDWEISER BUDRAU). Registrar’s order re costs set aside. Costs outside usual scale awarded. See BUD and BUDWEISER BUDBRAU Trade Mark [2002] RPC 38 page 747.
• 3. Proceedings appealed to the Court of Appeal. Decision of High Court upheld as regards costs.

Summary

The applicant’s case under Section 47(1) was, firstly, that by the relevant date the proprietor had already sought to protect the word BUD as an Appellation of Origin under the Lisbon Agreement, whereby registration contravened Sections 1(1) and 3(1)(c), there having been no use of the mark in suit in the UK prior to that date. Secondly, the applicant contended the registration was sought in bad faith (contravening Section 3(6)) because the proprietor had no intention of using the mark in suit except, perhaps, as a spoiling tactic, and simply sought to benefit from the applicant’s use and reputation in the same mark in the UK and overseas. The applicant had earlier failed in a protracted opposition for registration of the mark in suit.

In dismissing the applicant’s case under Section 3(1)(c), the Hearing Officer followed the guidance of the ECJ in the WINDSURFING case, finding that at the relevant date the relevant class of persons in the UK could not have had any familiarity with BUD as a geographical place name (noting, incidentally, that the UK was not a signatory to the Lisbon Agreement). As further support for this finding, he noted also the outcome of earlier litigation between the parties (the BUDWEISER cases 1984 FSR 439 and 457), namely that BUD was commonly used by both parties’ respective customers when ordering their respective goods.

The Hearing Officer also took the view that no different points arose under Section 1(1), and that there was no reason for him to consider the applicant’s case under the proviso to Section 47(1).

The applicant’s attack under Section 3(6) also failed, the Hearing Officer relying on his finding of genuine use of the mark in suit in earlier revocation proceedings (No 9057), and on the findings of concurrent goodwill et al in the BUD Trade Mark Case 1988 RPC 457. In considering costs, he expressed the view that the applicant had in fact an arguable case under Section 3(6), in the light of the various earlier findings