SHARED NAMES

The problem

The Prague Daily Monitor reports that Anheuser-Busch has triumphed in the Hungarian leg of the Budweiser saga. The Court of Appeals has ruled that Budweiser is not a geographical indication because it does not refer to the place where Budvar's beer is produced, since the official name of the town in southern Bohemia is Ceske Budejovice, not Budweis, which is the German translation.

The IPKat notes that the Budweiser case demonstrates the immense difficulties that can occur when traders coincidentally or even deliberately but in goods faith select the same names.

The answer

The IPKat observes that these problems will be addressed in a forthcoming conference run by CLT on 20 June at the Cafe Royal, London. The conference benefits from a wealth of top-class speakers drawn from practice (the bar and solicitors), OHIM, the Patent Office and academe. Its aims and objectives are as follows:

"The European Court of Justice has told us that the essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin.

In other words, a trade mark must unequivocally point to the goods of one undertaking to do the job of being a trade mark. As consumers we know this to be the case. A mark which we gives us an unclear message about who is responsible for the goods that we are buying will be of little use when selecting products or trying to make a repeat purchase of previously satisfactory goods.

To best fulfil this function, it might be thought that a single mark should only be used by a single owner and that the concept of ‘Sharing Names’ would conflict with this function. To some extent, this conflict has been recognised. The growth of protection against trade mark dilution on dissimilar goods, and widening understandings of confusion and passing off, have limited the situations in which it will be permissible to use a mark which is the same or similar to another trader’s marks on dissimilar goods.

In the real world though, things aren’t so simple. Some people argue in favour of sharing names. They claim that there are an infinite number of verbal combinations that could be used as trade marks and that, therefore, there is no problem in granting a ‘monopoly’ in a word to an undertaking. While this is true in theory, there are clearly some trade marks which are more effective than others and, in the interests of competition, these marks may have to be shared.

Away from the theory, there are practical reasons for recognising that it is sometimes fair to allow more than one trader to use the same mark. In some cases, undertakings will begin to use the marks in circumstances where they could not reasonably be expected to know of the existence of the other undertaking. This becomes a particular problem with the growth of the internet, where the same mark may unexpectedly come into conflict in completely unconnected jurisdictions. In other cases, such as those associated with family fallout, there may be good reasons for allowing both sides to use the personal names of someone connected with the undertaking. The question in these cases is how these marks can be shared in a way that causes (i) the least harm to the businesses of the respective users and (ii) the least consumer confusion?

In other cases, such as in co-branding and ingredient branding situations, and in cases concerning collective marks, both parties are happy to share the marks. The challenge then is once again to avoid consumer confusion, and also to ensure that the sharing takes place under an agreement that has sufficient safeguards in place if relations turn sour.

This conference analyses the legal problems faced by those who want to, or have to, share names. It aims to suggest practical solutions to these problems, and tips for avoiding them in the first place.