Budvar beats Anheuser-Busch in latest Budweiser battle
US brewer Anheuser-Busch recently lost its attempt to invalidate Budějovicky Budvar's trade mark
Anheuser-Busch filed for a declaration of invalidity of Budějovicky Budvar's trade mark (which was concurrently valid with its own) a day
before the expiry of the five-year period of acquiescence and when Budějovicky Budvar had no opportunity to respond to it. Among the questions posed was "what is meant by
"acquiesced" in Article 9(1) of Directive 89/104".
The Court of Justice of the European Union ruled that:-
1. Acquiescence, within the meaning of Article 9(1) of ... Council Directive 89/104 ... is a concept of European Union law and the proprietor of an
earlier trade mark cannot be held to have acquiesced in the long and well-established honest use, of which he has long been aware, by a third party
of a later trade mark which is identical with that of the proprietor if that proprietor was not in any position to oppose that use.
2. Registration of the earlier trade mark in the Member State concerned does not constitute a prerequisite for the running of the period of limitation
in consequence of acquiescence prescribed in Article 9(1) of Directive 89/104. The prerequisites for the running of that period of limitation, which it is for the
national court to determine, are, first, registration of the later trade mark in the Member State concerned, second, the application for registration of that
mark being made in good faith, third, use of the later trade mark by its proprietor in the Member State where it has been registered and, fourth,
knowledge by the proprietor of the earlier trade mark that the later trade mark has been registered and used after its registration.
3. Article 4(1)(a) of Directive 89/104 must be interpreted as meaning that the proprietor of an earlier trade mark cannot obtain the cancellation of an
identical later trade mark designating identical goods where there has been a long period of honest concurrent use of those two trade marks where, in circumstances such as
those in the main proceedings, that use neither has nor is liable to have an adverse effect on the essential function of the trade mark which is to guarantee
to consumers the origin of the goods or services".
More details can be found here