Yesterday’s Court of Appeal (CA) upholds a ruling resulting from the CA’s previous referral of the case to the Court of Justice of the European Union (CJEU), which in September 2011 upheld a CA’s 2000 ruling allowing both brands to use the mark.
But Mark Blair, partner at Mark and Clark solicitors, who acted for Budvar, told BeverageDaily.com this morning that “AB InBev have indicated that they wish to appeal to the Supreme Court [the highest appellate court] in the UK.”
He added: “Yesterday they applied to the CA for permission to appeal and it said ‘no’. But they [AB InBev] can then apply directly to the Supreme Court to get permission to appeal, and have indicated in news reports I have seen that they intend to so.”
Asked if he was confident of a positive outcome for his client if the case reached the Supreme Court, he added: “Yes – but obviously if the Supreme Court takes it on they will look at it. It depends upon the grounds of appeal, and I can’t really comment on that.”
AB InBev 'evaluates options'
An AB InBev spokeswoman told BeverageDaily.com that, regarding any possible appeal, “we are continuing to evaluate all our options”.
The firm said it was disappointed by the CA’s ruling, but that it neither impacted Budweiser trademark rights in the UK nor the brand’s business, which had grown 40% in the UK from 2009 to 2011.
In 2000 the CA ruled both companies could retain 'Budweiser' as a trademark due to "honest concurrent use": the long-standing presence of both beers on the UK market.
Subsequently, both companies were entered onto the UK Trade Marks Register as proprietors of the mark in May 2000.
However, in 2005 AB-InBev applied through the UK Trade Mark Registry to have Budvar's registration declared invalid.
AB InBev argued that its 1979 application to register 'Budweiser' for use with 'beer, ale and porter' predated Budvar's in 1989.
'Budweiser' name used in good faith
Thereafter, the CA sought clarification from the Court of Justice of the European Union (CJEU) on whether AB InBev's application should be granted, given the use of the 'Budweiser' name in good faith by both companies for over 30 years.
On September 22, the CJEU ruled that the 1989 Council Directive, 89/104/EEC, relating to trademarks stated that a trademark should be considered as not registered, or liable to be declared invalid, if it was identical with an earlier trademark, and goods and services covered by the two trademarks were identical.
But the CJEU also clarified case law rules on the so-called 'period of limitation', which applied in this case, since after a five year period following the registration of a later trademark, via acquiescence the earlier proprietor lost his right to oppose this later use.