# C_2011331EN.01000301.xml

| 12.11.2011 | EN | Official Journal of the European Union | C 331/3 |
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12.11.2011

EN

Official Journal of the European Union

C 331/3

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Judgment of the Court (First Chamber) of 22 September 2011 (reference for a preliminary ruling from the Court of Appeal (England & Wales) (Civil Division) — United Kingdom) — Budějovický Budvar, národní podnik v Anheuser-Busch Inc.

(Case C-482/09) (1)

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(Trade marks - Directive 89/104/EEC - Article 9(1) - Concept of acquiescence - Limitation in consequence of acquiescence - Starting point for limitation period - Prerequisites for the limitation period to run - Article 4(1)(a) - Registration of two identical marks designating identical goods - Functions of the trade mark - Honest concurrent use)

2011/C 331/04

Language of the case: English

Referring court

Referring court

Court of Appeal (England & Wales) (Civil Division)

Parties to the main proceedings

Parties to the main proceedings

Applicant: Budějovický Budvar, národní podnik

Applicant:

Defendant: Anheuser-Busch Inc.

Defendant:

Re:

Re:

Reference for a preliminary ruling — Court of Appeal (England & Wales) (Civil Division) — Interpretation of Articles 4(1)(a) and 9(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) — Limitation in consequence of acquiescence — Concept of acquiescence — Concept of Community law? — Possibility of proceedings under relevant national law, including rules relating to honest concurrent use of two identical marks

Operative part of the judgment

Operative part of the judgment

| 1. | Acquiescence, within the meaning of Article 9(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, is a concept of European Union law and the proprietor of an earlier trade mark cannot be held to have acquiesced in the long and well-established honest use, of which he has long been aware, by a third party of a later trade mark which is identical with that of the proprietor if that proprietor was not in any position to oppose that use. |
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1.

Acquiescence, within the meaning of Article 9(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, is a concept of European Union law and the proprietor of an earlier trade mark cannot be held to have acquiesced in the long and well-established honest use, of which he has long been aware, by a third party of a later trade mark which is identical with that of the proprietor if that proprietor was not in any position to oppose that use.

| 2. | Registration of the earlier trade mark in the Member State concerned does not constitute a prerequisite for the running of the period of limitation in consequence of acquiescence prescribed in Article 9(1) of Directive 89/104. The prerequisites for the running of that period of limitation, which it is for the national court to determine, are, first, registration of the later trade mark in the Member State concerned, second, the application for registration of that mark being made in good faith, third, use of the later trade mark by its proprietor in the Member State where it has been registered and, fourth, knowledge by the proprietor of the earlier trade mark that the later trade mark has been registered and used after its registration. |
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2.

Registration of the earlier trade mark in the Member State concerned does not constitute a prerequisite for the running of the period of limitation in consequence of acquiescence prescribed in Article 9(1) of Directive 89/104. The prerequisites for the running of that period of limitation, which it is for the national court to determine, are, first, registration of the later trade mark in the Member State concerned, second, the application for registration of that mark being made in good faith, third, use of the later trade mark by its proprietor in the Member State where it has been registered and, fourth, knowledge by the proprietor of the earlier trade mark that the later trade mark has been registered and used after its registration.

| 3. | Article 4(1)(a) of Directive 89/104 must be interpreted as meaning that the proprietor of an earlier trade mark cannot obtain the cancellation of an identical later trade mark designating identical goods where there has been a long period of honest concurrent use of those two trade marks where, in circumstances such as those in the main proceedings, that use neither has nor is liable to have an adverse effect on the essential function of the trade mark which is to guarantee to consumers the origin of the goods or services. |
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3.

Article 4(1)(a) of Directive 89/104 must be interpreted as meaning that the proprietor of an earlier trade mark cannot obtain the cancellation of an identical later trade mark designating identical goods where there has been a long period of honest concurrent use of those two trade marks where, in circumstances such as those in the main proceedings, that use neither has nor is liable to have an adverse effect on the essential function of the trade mark which is to guarantee to consumers the origin of the goods or services.

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(1)  OJ C 24, 30.1.2010.

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