FEDERAL COURT OF AUSTRALIA

 

 

 

 

 

 

Anheuser-Busch, Inc v Budějovický Budvar, Národní Podnik & Ors [2002] FCA 390

 

 

NG 194 of 1998

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

ALLSOP J

 

5 APRIL 2002

 

SYDNEY

 


SUMMARY

 

1.              In accordance with the practice of the Federal Court in certain cases of public interest, I have prepared this brief summary to accompany the reasons for judgment that are being delivered today. This summary is necessarily incomplete; the only authoritative pronouncement of my reasons is that contained in the full reasons for judgment.

2.              One further reason for providing this summary is that the evidence discloses that both the applicant and the first respondent, from time to time, in their struggle with each other in various jurisdictions in the world, have employed press releases to advance their own positions. In order to avoid things that I have said being taken out of context, I thought it appropriate to summarise briefly some of my findings.

3.              The proceedings were brought by the applicant against three respondents. The case proceeded only against the first respondent. The applicant is a United States corporation and the first respondent is a Czech corporation. Each manufactures and exports beer. The applicant manufactures and exports ‘Budweiser’ beer. It has trade marks in Australia for, amongst other things, the words ‘Budweiser’ and ‘Bud’. The first respondent also sells beer with labels bearing the words ‘Budweiser’ and ‘Budweiser Budvar’ in some parts of the world. In other parts of the world its beer is sold under the label ‘Budějovický Budvar’. Depending on the origin and language of the reader of the label, the syllable ‘Bud’ may be pronounced ‘bud’ as in ‘mud’ or ‘bud’ as in ‘good’. Also depending on the language or origin of the reader of the label, the ‘w’ may be pronounced as a ‘v’ or a ‘w’. The first respondent manufactures beer in a city in the Czech Republic where beer has been manufactured for over seven centuries. It is a town which is called Budweis, in German. It is called České Budějovice, in Czech. In German, the word ‘Budweiser’ is the adjectival form of the proper noun ‘Budweis’, meaning ‘of or from Budweis’. In Czech, the word ‘Budějovický’ is the adjectival form of the proper noun ‘Budějovice’, meaning ‘of or from Budějovice’.

4.              This litigation is one of a number of proceedings all around the world in which the applicant and the first respondent have fought, and are fighting, over trade marks and trade mark uses of various words.

5.              In these proceedings much of the dispute concerned whether the first respondent’s desire to sell its beer in this country under the brand or label ‘Budějovický Budvar’ was legitimate. I have found that the use of that phrase, in the manner in which it has been used, and in which it is proposed to be used, in Australia, as a trade mark on specific containers, is not, and would not be, an infringement of any trade mark of the applicant, and would not amount to either passing-off or a contravention of the Trade Practices Act 1974 (Cth).

6.              Nevertheless, I would make various orders restraining the first respondent selling beer using the particular labels which are proposed. I would make these orders because of the use of other words, less prominently displayed on the labels. These words are ‘Budweiser Budvar’ which are used on the labels as part of the first respondent’s name ‘Budweiser Budvar, National Corporation’. The first respondent has various versions of its name. ‘Budweiser Budvar, National Corporation’ is one. ‘Budějovický Budvar, Národní Podnik’ is another.

7.              Thus, whilst I have found that the primary trade mark usage of ‘Budějovický Budvar’ on the bottles in question was not, and is not, unlawful, the desire of the first respondent to use its so called ‘English’ corporate name, should, I think, be restrained, for the reasons I have given in my reasons for judgment.

8.              One of the bases upon which I would restrain that use involves a finding that this use of its name was not (in the previous versions of the label), and would not be (in the proposed label), in good faith. In making these findings it is important to understand that I have not concluded that the first respondent intended, or intends, to act dishonestly. Nevertheless, for reasons which I have set out in the reasons for judgment, I have concluded that the use was not, and would not be, in good faith, as that expression is to be understood for the purposes of s 122 of the Trade Marks Act 1995 (Cth).

9.              During the course of the hearing, senior counsel for the applicant put to me that I should not accept significant parts of the evidence of Mr Boček, the ‘General Director’, in effect the chief executive, of the first respondent. This was, and is, of course, a serious matter for a person in Mr Boček’s position and for the first respondent, particularly as it was linked to an assertion of lack of good faith. It is sufficient in this summary if I note that my conclusions have not involved any finding other than that Mr Boček was an honest witness.

10.          The parties have requested that they be permitted to consider my reasons and formulate, in draft, appropriate orders. As I have said in my reasons, I am content with this course.

 

Sydney, 5 April 2002

 

This judgment is available in full text on the internet at the following address:

www.fedcourt.gov.au