In the latest round of the continuing battle between the US and Czech beer producers, the dangers of not using a brand in the form that it is registered in are brought into sharp focus.
Who: Anheuser-Busch Inc ("AB") and Budejovicky Budvar Narodni Podnik ("BB")
When: December 2001
Where: Chancery Division of the High Court, London
Anheuser-Busch, owners of the American “Budweiser” beer brand, and Czech Republic-based Budejovicky Budvar, also owners of a "Budweiser" beer brand, have been locked in combat for many years. In the latest tussle, the bone of contention was one of the Czech company's registered UK trademarks. This consisted of the words "Budweiser Budbräu" in stylised typeface, the first word above the other. AB sought an order from the court that this registration should be declared invalid on grounds of non-use. BB, naturally enough, opposed.
The basic rule here is that even though a brand has been registered in respect of a particular product, that registration may be revoked if it can be shown that for a continuous period of 5 years following the registration the brand has not been used in respect of the registered product. On the evidence it seemed pretty clear that the one thing BB had not been doing for a continuous period of 5 years was actually using, in the UK, the "Budweiser Budbrau" brand in stylised form as registered, in connection with beer. BB argued, however, that the use they had made of the words Budweiser Budbräu, in non-stylised form, both on the necks of beer bottles and on invoices in respect of sales of the product, counted as “use” for these purposes and should therefore see to it that their registration survived.
The law on the point is at section 46 of the Trade Marks Act 1994. From this it is clear that, even if, during the 5 year period, the brand is only used in a slightly different form to that which is registered, this should be no problem provided the that the differences do not change the distinctive character of the mark.
But what does this mean exactly? This case grappled with the question. One thing the Chancery Judge was not prepared to say was that in all cases where a brand was registered in stylised form, non-stylised use of the words could not be relevant “use.” Each brand as registered had to be looked at individually, the judge said, and here he identified four distinctive elements. These were the words "Budweiser", the word "Budbräu", the particular stylised fonts used in the registration and the fact that as registered the word "Budweiser" appeared immediately above the word "Budbräu". Bearing these distinctive elements in mind, when looking at the use which BB made of the mark, the last two of those elements were absent. In the judge's view, this was fatal to BB's case, since it did mean that the brand was being used in a form which altered the distinctive character of the mark. Accordingly, subject to any BB appeal, the verdict was that the "Budweiser Budbräu" registration was invalid.
Why This Matters:
In many cases, brand names which might otherwise not be distinctive enough to qualify for registration as a trademark are rendered distinctive by use of a stylised typeface or juxtaposition of the words. If this is done, then it is crucial, as this case underlines, to ensure that from that point onwards, material use is made of the brand, in all the countries where it is registered, in the form in which it is registered. If there is any intention that stylised versions will not be used, then it may be worth at least attempting to register the brand in non-stylised typeface. This could potentially provide "long stop" protection against revocation.