Le célèbre cas de Budweiser

ARRÊT DE LA COUR (première chambre) ; 22 septembre 2011 ; C-482/09

We will focus on at one of the longest legal battle in commercial law and especially trademark law. This is the famous Budweiser case.

Historically, two beer producers argue about the use of the same designation to distinguish their product. U.S. brewer Anheuser-Busch (AB) and its Czech counterpart (Budvar) each one always used this trademark in various markets in which they operate. This trademark is “BUDWEISER”.

Every one struggles to recognize the Budweiser mark as the only one in each country. Every brewer wants to be the sole owner and sole user of this trademark.

 In theory, we apply the rule(ruler) of the anteriority : the storekeeper who is the first to use his mark prevails over the other one. Normally, the mark must be deposited in the National Trademark Office because it’s necessary to make recognize its right of commercial property on the mark(brand) and to act in annulment or forgery (imitation) against other posterior user of a similar mark(brand). Nevertheless, the registration allows to prove commercial property on the mark. This is why the registration process is essential to make recognize its rights on the mark(brand).

Recently, the European Court of Justice (ECJ) gave a judgment to settle a dispute submitted to the English courts: ref. In this judgment, the ECJ applied the concept of debarment/foreclosure by tolerance/acquiescence.

 The debarment by tolerance prevents the owner of the mark(brand) from exercising legal actions against the user of a similar mark(brand). So, it is the 2nd user of the mark(brand) that is going to bring into conflict the debarment by tolerance in case of attack of the 1st user.

Budweiser of Budvar was first sold in the United Kingdom in 1973. AB Budweiser was appearing a year later. However, AB was the first to file a trademark application for the Budweiser name, in 1979. In 2000 the UK courts decided that both companies could use the mark.

 In English law, two marks can coexisted on the same market. In French law, it’s practically impossible, we apply the rule of the anteriority strictly. The first user is the owner of the mark. Consequently, the 2nd user can be suing for annulment of the registered trademark later or for imitation.

In the present case, AB was not satisfied by this decision and, in 2005, claimed that Budvar’s mark should be declared invalid because its registration have been made after AB.

The main question of law is whether "Budvar” who filed BUDWEISER later may oppose the application for annulment brought by AB in claiming rights to use the mark in application of the debarment by tolerance.

The Court of Appeal in England and Wales referred the case to the ECJ to she answer several issues related to the interpretation of trademark law. She refused to strip Budvar of its UK trademark, and insisted that the two brewers learn to share.

The preliminary ruling allows the Court clarify the conditions of application of the foreclosure by tolerance.

In right(law), the debarment by tolerance frees(releases) the honest (good faith) competitor. It allows him to prevent to the owner of the mark from exercising her actions in nullity or in forgery against him if he tolerated the use(custom) of

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