Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc

For statutory acquiescence under section 48 of the Trade Marks Act 1994, the five-year period begins when the later mark is actually registered, not when its application is filed. The statutory concept does not exclude the separate English doctrine of estoppel by acquiescence, but estoppel requires evidence that the rights-holder’s conduct induced detrimental reliance. Invalidity proceedings are not an abuse merely because related opposition proceedings previously occurred, particularly where the statutory bases differ. Where an earlier mark covers only specified goods, invalidity for additional goods requires proof of similarity and likelihood of confusion. Those matters cannot be assumed from historic use or asserted without contemporaneous evidence.

The parties were competing brewers whose marks containing “Budweiser” had coexisted in the United Kingdom for many years. Earlier litigation had resulted in both parties obtaining registrations under the Trade Marks Act 1938. After the respondent became proprietor of an earlier registered mark under the Trade Marks Act 1994, it applied under section 47(2) to invalidate the appellant’s later registration.

The Hearing Officer accepted the application in relation to “beer, ale and porter” and “malt beverages”. The appellant appealed, relying on statutory acquiescence, common-law acquiescence, abuse of process and TRIPS. The central issues were whether the application was time-barred or estopped, whether it was abusive, and whether invalidity had been established for “malt beverages”.

1. Appeal partly allowed. The application for invalidity was maintainable in relation to “beer, ale and porter”, but failed in relation to “malt beverages”.

2. Following Sunrider Corporation v Vitasoy International Holdings Ltd [2007] EWHC 37 (Ch), the natural meaning of section 48 is that acquiescence must be in the use of a registered trade mark. The five-year period therefore begins on actual registration of the later mark. The appellant’s application was consequently brought in time.

3. The statutory concept of acquiescence in the Trade Marks Act 1994 and the TM Directive is not equivalent to common-law estoppel by acquiescence. The statutory provision does not exclude the latter doctrine. However, the evidence did not establish a representation, the necessary belief by the appellant, or detrimental reliance. No estoppel arose.

4. The earlier opposition proceedings did not make the invalidity application an abuse of process. Under Special Effects Ltd v L'Oreal SA [2007] EWCA Civ 1, opposition and invalidity proceedings are distinct. Invalidity under the 1994 Act could not have been raised in the earlier proceedings under the 1938 Act. A broad merits-based assessment was insufficient; the question was whether the present issue could and should have been raised earlier.

5. The TRIPS argument did not assist. A later registered mark was not an existing prior right for the purposes of Article 16. The provision protected prior trade-name rights against conflicting trademark rights, but did not preserve a later mark against invalidity under the 1994 Act.

6. The Hearing Officer erred in treating “malt beverages” as wholly covered by “beer, ale and porter”. The specifications were distinct categories, although they might overlap. Section 5(2) therefore required proof of similarity and likelihood of confusion. No adequate contemporaneous evidence was filed. Similarity and confusion could not simply be asserted, and invalidity for “malt beverages” was not established.

• High Court (Chancery Division): The appeal from the Hearing Officer’s decision was allowed only insofar as invalidity extended to “malt beverages”; otherwise it was dismissed. The provisional costs order was no order as to costs.