Anheuser-Busch, Inc v Budweiser Budvar National Corporation
Court of Appeal
Gault P, McGrath and Glazebrook JJ, 24-25 June 2002, 19 September 2002
This decision forms part of a long-running, international dispute between the parties concerning the right to use the name BUDWEISER in relation to beer.
Budweiser Budvar National Corporation ("BB") is a Czech brewer with a brewery in the town known both as Ceské Budejovice and Budweis. BB claimed to be entitled to use the name BUDWEISER in relation to its beer on the basis that the name of the town in which BB and its predecessors brewed beer had, at times, been called Budweis. BB is the registered proprietor in New Zealand of the trade mark BUDEJOVICKÝ BUDVAR in script and label form.
Anheuser Busch, Inc ("AB") sought to rectify the New Zealand trade marks register by the removal of marks registered in the name of BB. It also alleged infringement of its own registered trade marks BUDWEISER and BUD, passing off and breaches of the Fair Trading Act 1986.
One issue of particular note is the Court of Appeal's consideration of ss12(a) and 13 of the Trade Marks Act 1953.
Section 12(a) is the bona fide use of own name "defence" to trade mark infringement. It provides:
"No registration of a trade mark shall interfere with -
(a) Any bona fide use by a person of that person's own name or of the name of that person's place of business, or of the name, or of the name of the place of business, of any of that person's predecessor in business; or
(b) ..."
Section 13 provides:
"In an action for infringement of a trade mark it shall not of itself be a defence that the infringement arose from the use of the name under which a company has been registered."
Section 13 was first introduced in the Trade Marks Act 1953, and does not appear in either the UK or Australian Acts. It was enacted in response to the recommendations of the Evans Commissioner in 1950.
Although in all other respects Gault P delivered the leading judgment, His Honour took a different view of the operation of s 13 to that adopted by McGrath and Glazebrook JJ.
Gault P considered that section 13 was intended to deprive companies of the benefit of the own name defence. His Honour reasoned that the words "of itself" in section 13 indicate that even though the bona fide use of own name defence may be excluded, other defences, such as that the use as not use as a trade mark or that the name is not too close to the registered trade mark, remain.
By contrast, McGrath and Glazebrook JJ took the view that the purpose of section 13 was to simply put it beyond doubt that registration of a company under a name containing a trade mark does not in itself constitute a defence. Although this had never been suggested at the time section 13 was enacted, their Honours considered that possible future amendments to the Companies Act (also suggested by the Evans Commission) may give rise to such a claim. McGrath and Glazebrook JJ considered therefore that section 13 does not render a defence under section 12(a) unavailable for companies, but was merely enacted to forestall any unwarranted claims arising from the proposed amendments to the Companies Act.
In any event, both Gault P and McGrath and Glazebrook JJ agreed that section 12(a) had no application on the facts as the use of the trade mark was not bona fide.
The Court also commented on the parallel own name defence to passing off, but did not make any findings on this. Obiter comments place the future of the defence in some doubt, however. Gault P stated that while it was unnecessary to go into the issue of whether there is an own name defence for companies to passing off and, if so, its scope, it is to be kept in mind that any such defence would constitute a licence to practise deception on the public.