Podnik v Anheuser-Busch Inc

When deciding whether use of a variant constitutes use of a registered trade mark under section 46(2) of the Trade Marks Act 1994, the decision-maker should identify the differences between the mark as registered and the mark as used, then determine whether those differences alter its distinctive character.

The Registrar must analyse the mark’s visual, aural and conceptual qualities and make a global assessment of its likely impact on the average consumer. Words may dominate a mark so completely that differences in font, arrangement or other recognisable features do not alter its distinctive character.

An appellate court reviewing a specialist hearing officer’s evaluative decision may intervene for an error of principle or a clearly wrong conclusion. It cannot substitute its preferred assessment merely because another conclusion was reasonably available.

Two appeals concerned applications by Anheuser-Busch Inc to revoke trade marks registered to Budejovicky Budvar Narodni Podnik for beer, ale and porter. The applications alleged five years’ non-use under section 46 of the Trade Marks Act 1994.

In the first matter, a hearing officer held that use of the words BUDWEISER BUDBRÄU on bottle-neck labels amounted to use of the stylised registered mark under section 46(2). The deputy High Court judge reversed that decision. In the second matter, another hearing officer dismissed the revocation application concerning a stylised BUD mark. The deputy judge upheld the dismissal by relying on promotional beer mats.

The central issues were how differences between a registered mark and the form used should be assessed under section 46(2), the proper appellate standard when reviewing a hearing officer, and whether the established use of BUD was genuine use.

1. The first appeal was allowed and the second appeal was dismissed. Anheuser-Busch Inc’s applications to revoke both registrations therefore remained dismissed. Sir Martin Nourse gave the leading judgment. Lord Walker and Pill LJ agreed with his reasoning and disposition.

2. Under section 46(2) of the Trade Marks Act 1994, a mark may be used in a form differing in elements that do not alter the distinctive character of the registered form. The necessary inquiry is first to identify the differences between the mark as used and the mark as registered, and secondly to decide whether those differences alter the registered mark’s distinctive character.

3. The Registrar must use specialist experience to analyse the mark’s visual, aural and conceptual qualities and make a global assessment of its likely impact on the average consumer. The average consumer ordinarily perceives the mark as a whole without analysing its details. There is therefore no direct conflict between assessment by the Registrar and assessment through the eyes of the average consumer.

4. A mark may contain recognisable elements that are insufficiently significant to form part of its distinctive character. Words may dominate so that differences in font, underlining, arrangement or surrounding devices do not alter that character. The first hearing officer was entitled to find that the distinctive character of the BUDWEISER BUDBRÄU mark resided in the words. His reasoning disclosed no material error of principle. The deputy judge had therefore lacked a proper basis for substituting his own assessment.

5. The same reasoning applied to the second hearing officer’s conclusion that BUD in block capitals or dot-matrix print was use of the stylised registered BUD mark. Its presentation with BUDVAR and BUDWEISER on boxes was use of separate adjacent marks, rather than a single composite mark.

6. The boxes reached end consumers and represented a substantial part of a substantial United Kingdom trade. That evidence supported the conclusion that BUD was genuinely used in relation to beer, even on the assumed test that the proprietor must be conducting business under the mark. It was unnecessary to decide whether oral use or the limited use on beer mats sufficed, or to refer any question to the European Court of Justice.

1. Court of Appeal (Civil Division): In [2002] EWCA Civ 1534, allowed Budejovicky Budvar Narodni Podnik’s first appeal, reinstated the hearing officer’s dismissal of the first revocation application, and dismissed Anheuser-Busch Inc’s second appeal. Both revocation applications remained dismissed.

2. Chancery Division: Simon Thorley QC, sitting as a deputy High Court judge, allowed Anheuser-Busch Inc’s appeal concerning the BUDWEISER BUDBRÄU registration, but dismissed its appeal concerning the BUD registration. No citation is stated.

3. Registrar of Trade Marks: Hearing officers Mr Salthouse and Mr James separately dismissed Anheuser-Busch Inc’s applications to revoke the respective registrations.