The UK Trade Mark Registry has recently given a decision in the latest round of the Budweiser saga which revolves around Anheuser Busch Inc ("AB"), the US manufacturer of BUDWEISER beer and Budejovicky Budvar NP ("BB"), the Czech company which distributes beer under the names BUDVAR, BUDWEISER BUDVAR or BUDWEISER .
AB adopted the name BUDWEISER for beer at the end of the 19th century, inspired by the name Budweis for a Czech town. BB are the successors to a company who had brewed beer in Budweis since the end of the 19th century. In the UK, both companies have been selling their beer to the general public since the 1970s. The US beer was however, until the late 1970s, only sold through US military bases and in the US Embassy. Subsequently it was sold to the general public and was heavily marketed. BB's beer was sold on a smaller scale, but had been sold to the general public in the UK since 1973. They marketed their beer in the UK as BUDVAR, BUDWEISER BUDVAR or BUDWEISER.
This case relates to a UK trade mark registration obtained by BB for the word "BUD", written in stylised form, in Class 32 for beers. AB applied for the trade mark to be revoked on the ground that the trade mark had not been used for a consecutive period of 5 years in relation to any of the goods covered by the registration. The onus was on BB to demonstrate that it had made genuine use of the mark during the relevant 5 year period between 1991 and 1996.
BB alleged that it had made use of BUD in various ways although the word "BUD" did not appear on the bottles in which its beer was supplied. First, BB had supplied a substantial quantity of beer to distributors in the UK in boxes bearing the words "BUD-BUDVAR-BUDWEISER" in a form of dot matrix print. 30% of this beer was sold on to end consumers in these boxes through cash and carry outlets. Second, BB issued invoices which included BUD in a list of its trade marks. Third, BB's computer ordering system identified its product using a code e.g. BUD33 (330ml bottles) and that trade customers used these codes during the relevant period. Fourth, BB's customers referred to its products as "BUD", "BUDWEISER", "BUDVAR" and "Czech BUD", although of these the last two names were the most common. Fifth, BB sent promotional beer mats to the UK which included a motif containing the words "Bud& & ..Budweis& & Budweiser". The word BUD which appeared on these mats was in the same stylised form as the registered trade mark.
AB argued that apart from the beer mats, BB's evidence was not of use of the mark as registered because the other 4 uses were of BUD in capital letters rather than the stylised form for which the trade mark was registered. Section 46(2) of the Trade Marks Act 1994 provides that use of the trade mark includes use in a form which differs from the registration, provided it does not differ in such a way that it alters the distinctive character of the trade mark. The hearing officer considered that on the evidence of this and the previous cases between the parties, the trade mark BUD distinguished the goods of AB and BB from those of other parties but BUD was not distinctive of the goods of either AB or BB. When a customer asked for BUD the difference between Czech and US BUD would usually be explained. The hearing officer thought it highly unlikely that customers would react differently to BUD in the graphical form to the word in capitals. Therefore, he found that use in capitals and in dot matrix print was use within section 46(2). The hearing officer also found that use of the words "BUD-BUDVAR-BUDWEISER" on the boxes was not use of one composite mark but rather use of 3 separate marks adjacent to one another. Accordingly, the registered trade mark had been put to use on the boxes although the stylised print had not been used and additional trade marks appeared beside BUD.
AB also argued that all 5 forms of use were too limited to be considered "genuine" use of the trade mark. When considering whether the use was "genuine" the hearing officer decided that he had to consider the quantity of the use and whether it was in relation to the goods at issue. He considered that since the number of boxes bearing the trade mark BUD was substantial and that customers referred to BB's product as BUD, it followed that the use by BB had been genuine. Accordingly, the hearing officer did not need to consider whether the use on invoices and product codes was sufficient to be considered genuine.
The hearing officer went on to consider whether oral use of the word BUD by customers amounted to genuine use of the trade mark by BB. The hearing officer thought that use by customers alone would be insufficient to support genuine use by the trade mark proprietor since section 46(1) of the Trade marks Act 1994 requires that genuine use must be either by the proprietor or with his consent. However he thought that in this case, BB had by its own use of the trade mark invited customers to refer to its product as BUD and had accordingly consented to use by its customers as required by section 46(1).
Finally the beer mat evidence was considered. The hearing officer again found that use of the words "Bud& & ..Budweis& & Budweiser" was use of two trade marks BUD and BUDWEISER. He excluded BUDWEIS as it was the name of a town. He found that the use was in relation to BB's beers rather than its beer mats. Because of the limited numbers of mats distributed, the hearing officer felt that taken in isolation this use would be too small to constitute genuine use. However, in the light of the other uses of BUD, and the evidence of the oral use by customers, the hearing officer considered the use on beer mats was sufficient to support genuine use of the trade mark.
Accordingly, AB's application to revoke the trade mark failed and both companies remain free to use the names BUD and BUDWEISER for their products.