Not best Buddies!

The reason to have a trade mark is to set your goods or services aside from those of others. You choose a mark, someone buys your goods or uses your services, and they will know what to expect. The mark sets the quality, the value, and the reputation grows.

Then there is the reason for registering that trade mark. Registrations provide you with the right to prevent others from using your mark, or a similar mark, in relation to goods or services set out in the registration. Your registration will not be able to cover all goods and services but does that matter?

Consider the trade mark POLO. This is registered as a trade mark by a number of companies. The fact that the goods sold under this mark by the different companies – including mints, cars and clothing – are so far removed from each other suggests not.

So what about BUDWEISER? For many years the American company Anheuser-Busch, Inc. have been fighting Czech company Budejovicky Budvar over the right to produce and market beer under the BUDWEISER trade mark.

In 1871 Budweiser Beer was first exported from Bohemia to the United States. Five years later the US Company Anheuser-Busch began using the trade mark BUDWEISER and subsequently registered it as a trade mark in the United States. In 1895 another company, which was nationalised during the Communist era, now named Budejovicky Budvar, began brewing and exporting a beer under the BUDWEISER brand from the Czech Republic. Some exports resulted in the product entering the US market and since 1911 there have been trade mark disputes between the companies concerned. Agreements have been reached but for various reasons have not always been adhered to. Ultimately, sales have been made by the respective companies in a large number of countries and the fact that co-existence has been possible in countries where legal action has not been taken within a reasonable period of time to stop such use, has resulted in a stalemate. Whilst Anheuser-Busch in particular have continued to fight cases in an attempt to prevent use and registration of BUDWEISER by the Budvar company, the most recent decision, issued on 23rd September 2011 by the Court of Justice of the European Union, ruled that despite having filed for registration of their mark in the United Kingdom in 1976, some thirteen years before Budejovicky Budvar’s application for registration in the United Kingdom, the fact that the two brands have co-existed in the UK for decades, differing in taste, price and get-up, has meant that confusion does not exist. Use and registration of the exact same mark for the exact same goods by entirely different companies has been seen to be acceptable.

There is no doubt that fighting these trade mark cases will have resulted in extraordinary costs for both parties over the years. Indeed on 6th April 2007 the Czech Agricultural Minister announced that it was intended that the Budvar Brewery would be privatised by the Czech Government but that the privatisation would depend upon the outcome of the trade mark dispute with Anheuser-Busch. That the whole privatisation of the Budvar Brewery can be dependent upon a trade mark shows the value of a trade mark and the overriding lessons which must be learnt are firstly that it is imperative you obtain your rights in your trade mark in order to prevent others from using your mark, and secondly that you ensure the rights in the trade mark are enforced in some way or other within a reasonable time of discovering use of your mark by another party.

If you fail to heed these lessons then you leave yourselves open to others using your mark and either gaining from, or possibly destroying, the reputation and goodwill which you will have built up in your product through manufacture, sales, promotions and advertisement over the years.