Anheuser-Busch, Inc v Budejovicky Budvar, Narodni Podnik [2002] FCA 390

Anheuser-Busch, Inc v Budejovicky Budvar, Narodni Podnik [2002] FCA 390

The use of 'Budějovický Budvar' on the main white label and neck seal did not infringe the applicant's trade marks as it was not substantially identical with nor deceptively similar to 'Bud', 'Budweiser' or 'Budweiser King of Beers'. However, the use of 'Budweiser' and 'Budweiser Budvar' on the coloured strip of the label, even as part of the company name in English, constituted trade mark use and did infringe the applicant's 'Budweiser' mark, except where such use corresponded to the registered corporate name post-May 1998; but in these circumstances, the defence of good faith was not made out because the first respondent was aware of the applicant's reputation and the likelihood of...

Parties
Applicant: Anheuser-Busch, Inc; First Respondent: Budějovický Budvar, Národní Podnik; Second Respondent: F.M. Liquor Pty Ltd ACN 009 350 378; Third Respondent: House of Hops (Aust) Pty Ltd ACN 072 644 341
Jurisdiction
Australia
Judgment Date
05 April 2002
Procedural Posture
Intellectual Property/trade Marks, Trade Practices, Passing Off / Trial Judgment
Outcome
Part relief granted to the applicant; parties to bring in orders to give effect to the reasons; findings of infringement and contravention, but specific orders deferred for further submissions.
Legal Topics
Trade Mark Infringement, Trade Practices Act Misleading or Deceptive Conduct, Passing Off, Use of Trade Mark as Company Name, Good Faith Use Defence, Groundless Threats of Legal Proceedings
Intellectual Property Trade Marks Consumer Protection Trade Mark Infringement Trade Practices Act Misleading or Deceptive Conduct Passing Off Use of Trade Mark as Company Name Good Faith Use Defence +1 more

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Parties

Anheuser-Busch, Inc

Applicant

Budějovický Budvar, Národní Podnik

First Respondent

F.M. Liquor Pty Ltd ACN 009 350 378

Second Respondent

House of Hops (Aust) Pty Ltd ACN 072 644 341

Third Respondent

Procedural Posture

Intellectual Property/trade Marks, Trade Practices, Passing Off / Trial Judgment

Legal Issues

  1. 1 Whether the first respondent's use of 'Budějovický Budvar' and 'Budweiser Budvar' infringed the applicant's registered trade marks 'Bud', 'Budweiser', and 'Budweiser King of Beers' under the Trade Marks Act 1995 (Cth)
  2. 2 Whether the use of the phrase 'Budweiser Budvar' on the beer labels constituted use 'as a trade mark'
  3. 3 Whether any such use was in good faith as part of the first respondent's name under s 122(1)(a)(i) of the Trade Marks Act

Ratio Decidendi

The use of 'Budějovický Budvar' on the main white label and neck seal did not infringe the applicant's trade marks as it was not substantially identical with nor deceptively similar to 'Bud', 'Budweiser' or 'Budweiser King of Beers'. However, the use of 'Budweiser' and 'Budweiser Budvar' on the coloured strip of the label, even as part of the company name in English, constituted trade mark use and did infringe the applicant's 'Budweiser' mark, except where such use corresponded to the registered corporate name post-May 1998; but in these circumstances, the defence of good faith was not made out because the first respondent was aware of the applicant's reputation and the likelihood of...

Court Disposition

Part relief granted to the applicant; parties to bring in orders to give effect to the reasons; findings of infringement and contravention, but specific orders deferred for further submissions.

Orders

  • Applicant and first respondent to file agreed or separate proposed short minutes of order regarding final orders.
  • Proceedings stood over to a date to be fixed for argument, if any, on the form of final orders and for the making of final orders.