WEDNESDAY, 21 OCTOBER 2009
In Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc  EWCA Civ 1022 the Court of Appeal (England and Wales) yesterday referred three questions to the Court of Justice of the European Communities for a preliminary ruling. They are:
"In Council Directive 89/104/EEC: Further comments on this decision can be found here.
1. What is meant by "acquiesced" in Article 9(1) and in particular:
(a) can the proprietor of a trade mark be held to have acquiesced in a long and well-established honest use of an identical mark by another when he has long known of that use but has been unable to prevent it B
(b) is it necessary that the proprietor of a trade mark should have his trade mark registered before he can begin to "acquiesce" in the use by another of (i) an identical or (ii) a confusingly similar mark B
2. When does the period of "five successive years" commence and in particular, can it commence (and if so can it expire) before the proprietor of the earlier trade mark obtains actual registration of his mark; and if so what conditions are necessary to set time running ?
3. Does Art 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 so that the guarantee of origin of the earlier mark does not mean the mark signifies the goods of the proprietor of the earlier and none other but instead signifies his goods or the goods of the other user B".