Showing posts with label concurrent use. Show all posts
Showing posts with label concurrent use. Show all posts

Thursday, August 9, 2012

The King of Beers' Fitting Legacy: Brawling Over Budweiser

Budweis Today / Wikimedia Commons / Norbert Aepli
This fascinating trademark dispute finds its roots nearly 800 years ago in the Middle Ages, and it never seems to have ended.

In the quaint European town of Budweis (or Böhmisch Budweis, today's České Budějovice), a certain form of beer has been brewed since it was dubbed "Budiwoyz" by King Ottokar II of Bohemia in 1245.

King Ottokar was originally educated for the role of an ecclesiastical administrator. However, after the death in 1247 of Ottokar's older brother and the heir of Bohemia, Ottokar himself became the heir.

Statue of King Ottokar II
According to popular oral tradition, Ottokar was profoundly shocked by his brother's death and did not involve himself in politics, instead becoming focused on hunting and drinking heavily. Ottokar also founded the town of Königsberg, the namesake of yet another beer.  He became, so to speak, the original King of Beers.

Centuries later, in 1876, Adolphus Busch and his friend Carl Conrad, a liquor importer, developed a "Bohemian-style" lager, inspired after a trip to the region, including the now-famous Budweiser.  The name Budweiser is genitive, meaning "of Budweis."

By the end of the 20th Century, American company Anheuser-Busch and Czech company Budejovicky Budvar Narodni, had both sold beer in the United Kingdom under the name "Budweiser" for decades.

In 2000, the UK Court of Appeals held that both Anheuser-Busch and Budvar were permitted to register "Budweiser" as a trademark in the UK because there was "honest concurrent use" of the mark by both companies.  That is, both companies had been simultaneously using the name for a long period of time without any significant adverse effects on the marketplace.

However in 2005, Anheuser-Busch applied for an order under Article 4(1)(a) of EU Directive 89/104 that Budvar's existing registration be rendered invalid and that it be declared the only legitimate source of Budweiser in the United Kingdom. Budvar also apparently declared itself the "original" Budweiser.

The UK Court of Appeals referred a number of questions to the Court of Justice of the European Union, including:

  "Does Article 4(1)(a) apply so as to enable the proprietor of an earlier mark to prevail even where there has been a long period of honest concurrent use of two identical trade marks for identical goods?" The Court of Justice of the European Union found that the circumstances of this dispute were so exceptional as to justify concurrent usage by both companies.

The European Court of Justice said that the proper interpretation of the relevant law means that the owner of an older trademark cannot obtain a declaration that an identical later trademark designating identical goods is invalid in circumstances where there has been a "long period of honest concurrent use of those two trademarks" and that situation has not had (nor is likely to have) an adverse effect on the essential function of the trademark, which is to guarantee the origin of the goods. The Court of Justice dismissed the existence of some documented cases of actual consumer confusion as too marginal to overcome its conclusion.

In the end, it would seem that the original King of Beers' legacy was to encourage a bit of brawling nearly eight centuries after his death.

Friday, August 3, 2012

Excuse Me...Who Does This "Lost Dog" Belong To?

The Lost Dog Coffee Shop in Shepherdstown, West Virginia (population 1,734) recently received a formal cease and desist letter from an attorney representing "The Lost Dog Cafe," a restaurant located in Arlington, Virginia, sending shockwaves throughout the small West Virginia town.

Hundreds of town residents have signed an online petition, but the Arlington-based cafe is not backing down from its threats.

On January 3, 2000, Shepherdstown, West Virginia was the unlikely site of the Peace Talks between Israel and Syria where both sides were urged to make the hard choices needed to end a half-century of conflict.

Those negotiations didn't quite work out like everyone had hoped, and it doesn't seem that this dispute will end anytime soon, either.  

The owner of the Lost Dog Coffee Shop has indicated that he has no intention of acquiescing to the Lost Dog Cafe's "trademark bullying."

Someone should remind the parties that there is always a bigger dog on the block:  The Lost Dog Cafe located in downtown Binghamton, New York, has a concurrent use right recognized by the U.S. Patent and Trademark Office senior to everyone.