• Court Diary

    Hey Buddy, what's the use?

    The latest skirmish in the long running battle between the American brewer Anheuser-Busch (AB) and its Czech counterpart Budejovicky Budvar (BB) threw up some interesting points of UK law.

    AB had applied to the UK Trade Mark Office to revoke BB's UK Class 32 registrations of the marks Budweiser Budbräu and Bud, both in stylised forms, on the ground of non-use (Section 46 of the 1994 Act). The revocation actions both failed in the Office and appeals filed by AB both came to be heard by Mr. Thorley QC, sitting as a Deputy High Court Judge.

     

    The first appeal

    BB had shown evidence of use of the words Budweiser Budbräu, in plain capital letters, that is not in the stylised form in which the mark had been registered. In the Hearing Officer's view, this use was enough to maintain the registration of the stylised form of the mark, on the basis that what was being used was essentially what the public would recognise the registered mark to be. Mr. Thorley rejected this reasoning on two counts. Firstly, because the relevant test person was not the general public but the Registrar, and secondly, because the Hearing Officer had applied the wrong test.

    The relevant part of the Act (Section 46(2)) says that use of a different mark to the one registered counts as use if it is "in a form differing in elements which do not alter the distinctive character" of the registered mark. Mr. Thorley held that this means that it is first necessary to determine what exactly are the elements that give the registered mark its distinctive character. In the present case, he decided that these had to include such features as the lettering styles used and the particular juxtaposition of the two words Budweiser and Budbräu. He then held that since these features were absent from the mark that was actually used, the used mark had to be regarded as different in its distinctive character and thus unable to save the registration.

     

    The second appeal

    In the second case, BB had relied upon their distribution of 75,000 beer mats in the UK on which appeared the words "Bud…Budweis…Budweiser". The relevant Section of the Act (Section 46(1)) requires there to be "genuine" use of the mark "in relation to" the registered goods, in this case, beer. Mr. Thorley noted that there was no evidence of any use of the mark Bud(stylised) on the product itself, but declared that this did not affect the matter, on the basis that it is not uncommon for products to be known by a diminutive (e.g. Coke). He also held that the strapline "Bud…Budweis…Budweiser" was a perfectly reasonable use of the registered mark Bud (the stylisation being the same in each case). He finally held that the use of the mark on beer mats was genuine since, although such use was small compared with the amount of beer sold, it was part of a proper trade in beer and was a promotion that sought to capitalise on the public's habit of referring to the beer by the nickname Bud.

     

    Comment

    There are other parts of the 1994 Act that concern alterations to marks, in particular Sections 39 (amendment of pending marks), 44 (amendment of registered marks) and 41 (marks constituting a "series"). The wording of these Sections follows the language of the old law. The wording of Section 46(2), however, is taken straight from the Directive and is new. Under the provisions of the old law, use of a different mark could save a registration if the used mark had "additions or alterations not substantially affecting its identity". Whether or not the Budweiser Budbräu aspect of this case would have turned out differently if it had been decided under the old (1938) law is a moot point. What is clear, however, is that the test now is not the same as it was.

    What is perhaps not so clear is how the case would have been decided if what had been registered were the plain words Budweiser Budbräu and what was used was the stylised version. It has customarily been supposed that registration of a mark in plain block letters in black and white covers its use in any number of different lettering styles or colour combinations. It seems that this cosy assumption may now have to be re-considered. In particular, if there are any differences between a mark as registered and the mark as actually used that are of a potentially distinctive nature, then the safest course would appear to be to register the new form. As Counsel for AB noted, the thrust of the legislation now is "use it or lose it".

    The Community Trade Mark Regulation has similar provisions regarding use of registered marks, again using language identical to the Directive. We are still awaiting the first decision from the Cancellation Division at OHIM and it will be interesting to see if they interpret the law in the same way as Mr. Thorley. Turning to the Bud aspect of this case, it might at first seem slightly surprising that use of a mark on a beer mat should be found sufficient to save a registration of the mark for beer, particularly where the mark is nowhere to be seen on the product itself. However, this would be analogous to the use of slogans, which often do not appear on products themselves, but which are nevertheless now viewed as registrable under UK law. It would be interesting to speculate, however, how far this "related" use could go. Would, for example, the use of Bud on the front of a t-shirt save a registration for the mark in respect of beer? Also slightly surprising was Mr. Thorley's conclusion that use of the slogan "Bud…Budweis…Budweiser" constituted use of the registered mark Bud. Having said that he regarded this expression as a clever advertising ploy, he could have concluded that the "mark" that was being used was the whole expression. If so, then the registered mark would presumably not have been saved, since the expression as a whole clearly has certain distinctive elements not present in the registered mark.