Budweiser v Budvar: The Trademark Fight That Has Lasted More Than a Century

By Imaduddin

Photo: HOerwin56 / Pixabay

Few trademark disputes have outlived the people who started them. The fight over the word "Budweiser" is one. On one side is Anheuser-Busch, the American brewer now part of AB InBev, which has sold a lager called Budweiser since the nineteenth century. On the other is Budějovický Budvar, a state-owned brewery in the Czech town of České Budějovice, known in German as Budweis. Both say the name belongs to them, and both have a story that makes sense.

Why two brewers claim one name

For Anheuser-Busch, Budweiser is a brand built through use and marketing over many decades. For Budvar, "Budweiser" simply means "from Budweis", so the word points to a place where beer has been brewed for centuries. According to Budvar, the legal disputes over the name have been running since 1907. The two sides have litigated or negotiated in dozens of countries, and the result is a patchwork: in some markets one company has the name, in others the other does, and in a few both share it.

Budvar has also published its own scorecard. According to Budvar's July 2012 statement, between 2000 and 2011, 124 lawsuits and administrative procedures had been completed, with 88 decided in its favour and 8 ending in settlement or a draw. That is Budvar's own count, not an independent one, but it shows the scale of the conflict.

The British chapter

The United Kingdom produced one of the clearest legal results. According to Budvar's account, a British court ruled in 1984 that both brewers had traded under the name for so long that both could keep using it. Budvar also says that in 2000 the UK registrar allowed both companies to register BUDWEISER on the basis of honest concurrent use, which left the same word registered to two unrelated companies.

Anheuser-Busch then tried to cancel Budvar's registration. The case went to the Court of Justice of the European Union, which ruled on 22 September 2011 in Case C-482/09. The court held that "acquiescence" is a concept of EU law and that an earlier owner cannot be treated as having tolerated a later mark if it had no means of stopping that use. More importantly for Budvar, the court said a later identical mark for identical goods does not have to be cancelled where the two marks have co-existed honestly for a long time and that co-existence does not harm the mark's essential function of showing where goods come from.

Applying that guidance, the Court of Appeal of England and Wales ruled on 3 July 2012 that Budvar's UK registration could stay on the register. According to Budvar's statement the next day, the court had dismissed Anheuser-Busch's cancellation request and ordered it to pay Budvar's costs.

What the case teaches

The Budweiser story is a lesson in what happens when a geographical name and a commercial brand collide. Neither side is a bad-faith copier, so courts have had to choose between two honest histories, or let both stand. The CJEU's 2011 ruling also shows that in Europe, long and honest co-existence can be a legal fact that a later challenger cannot simply undo.

The Indonesian angle

Indonesia protects geographical indications alongside ordinary marks under Law No. 20 of 2016 on Marks and Geographical Indications. Under Article 20(c), a mark cannot be registered if it contains elements that could mislead the public about the origin of the goods, and Article 21(1)(d) requires the refusal of an application that is similar to a registered geographical indication. We are not aware of an Indonesian court decision involving the Budweiser or Budvar marks. For brand owners, the practical point is simple: if a brand name is also a place name, expect it to be challenged, and file early in every market that matters.

Sources

• Court of Justice of the European Union, judgment of 22 September 2011, Budějovický Budvar v Anheuser-Busch, Case C-482/09 (EUR-Lex)
• Budějovický Budvar, "Budweiser Budvar Brewery has claimed victory in an important dispute over the BUDWEISER trademark in the United Kingdom" (4 July 2012)
• Court of Appeal of England and Wales, Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc [2012] EWCA Civ 880 (CaseMine)
• JDIH BPK, Law No. 20 of 2016 on Marks and Geographical Indications (statute text and status, in Indonesian)