Landmark win against Budweiser

  1. INTRODUCTION

    the issues
  2. This case primarily concerns the markings on bottles of beer which the first respondent, a Czech brewing company, exported to Australia in 1997 and which it intends to export to Australia.  The applicant claims that the first respondent’s past and proposed labels infringe its trade marks registered under the Trade Marks Act 1995 (Cth) (the TM Act) in particular ‘Budweiser’, ‘Bud’ and ‘Budweiser King of Beers’, that the past and proposed conduct has amounted, and will, if allowed, amount to a contravention of s 52 and paras 53(c) and (d) of the Trade Practices Act 1974 (Cth) (the TP Act) and that the conduct has amounted, and will amount, if allowed, to passing-off. Orders have previously been made against the second respondent. The third respondent, which was, for a time, the importing agent of the first respondent, is in liquidation. No application was made by the applicant to continue the proceedings against the third respondent. Various undertakings on a final, but ‘without admissions’, basis have been proffered to the Court by the first respondent. I will deal with these undertakings in due course.
  3. The applicant, Anheuser-Busch, Inc. is a company incorporated in the State of Missouri in the United States of America. It is, and at all relevant times has been, registered as the proprietor of various marks under the TM Act and earlier Commonwealth trade mark legislation. There was no issue in the proceedings about the registration, ownership or validity of the trade marks. The five trade marks pleaded as those in respect of which the applicant complains about the conduct of the first respondent are as follows:
NUMBER MARK CLASS GOODS
163032 BUD 32 Beer, ale and porter and their ingredients included in this class
163033 BUDWEISER 32 Beer, ale and porter and their ingredients included in this class
366841

BUDWEISER KING OF BEERS

32 Beer
549247 BUDWEISER 25 All goods in this class
549248 BUD 25 All goods in this class
the applicant
  1. The applicant is the principal subsidiary of Anheuser-Busch Companies, Inc. which is the parent company of the companies in what might be termed the Anheuser-Busch Group.  Whilst the proceedings concern rights of, and complaints by, the applicant, the relevant facts to which I will be referring concern other, and in some cases predecessor, Anhueser-Busch companies.  For this reason, from time to time, I will use the expression ‘Anheuser-Busch’ in a generic way to refer to the applicant or corporate interests relevantly connected to the applicant.  No particular point was taken by the first respondent about the corporate forms of the applicant and its predecessor and related corporations.
  2. Amongst other things, Anheuser-Busch makes and sells beer in the United States of America, licenses the making and selling of beer in various countries and sells beer in various countries around the world.  It is the world’s largest brewing organisation, and has been since about 1957.
  3. Anheuser-Busch sells its beer in Australia and elsewhere under the brand ‘Budweiser’.  The beer is also labelled with the word ‘Bud’, and the phrase ‘King of Beers’ immediately after, or proximate to, the word ‘Budweiser’.
  4. Anheuser-Busch has been a producer of large quantities of beer since the nineteenth century.  From 1876 until 1895, or thereabouts, when it purchased the business of the brewer C. Conrad & Co (including the label ‘Budweiser’) Anheuser-Busch produced beer under contract for C. Conrad & Co.  Since that time, Anheuser-Busch has produced and sold beer branded ‘Budweiser’ in the United States and elsewhere in the world, on its own account.
  5. The applicant’s product is reasonably well known in Australia, at least amongst beer drinkers, as an American beer.  For instance, Ms Strachan, who had great experience as a market researcher and marketing consultant in Australia, and who was called by the first respondent, agreed that at least among English speaking people in Australia the only meaning of the word ‘Budweiser’ is the applicant’s beer, and that, in the context of beer, the only meaning of the word ‘Bud’, in Australia, is the applicant’s beer.  I should add that the agreement given to the those propositions involved agreement to questions expressed using the syllable and word ‘Bud’ pronounced to rhyme with ‘mud’, not ‘good’.
  6. The views of Ms Strachan, which were shared by Dr Beaton, a ‘strategic marketing and management consultant’, who was called by the applicant, make it necessary to examine the evidence concerning the reputation of the applicant’s products in Australia only in order to give content to these views. It is also appropriate to say something of these matters in order to place my views in connection with the TP Act and passing-off counts, and with some aspects of the TM Act case, in context.
  7. In 1996, ‘Budweiser’ was the largest selling brand of beer in the world and ‘Bud Light’, a low alcohol beer, was the third largest.  ‘Bud Light’ has been manufactured and sold since about 1982.  The word ‘Bud’ has appeared on packaging of Budweiser beer since about 1953.
  8. In 1920, Anheuser-Busch’s ‘Budweiser’ beer was shipped to 44 countries on 6 continents.  It has been sold worldwide since the Second World War.  In the 1990s it was brewed under licence in 11 countries and exported from the United States to another 70 countries, including Australia and New Zealand.  ‘Budweiser’ beer appears to have been first imported into Australia in 1914, although Anheuser-Busch does not appear to have appointed a distributor in Australia until 1965.
  9. Anheuser-Busch has undertaken an active expansionary export policy since the 1970s, based on significant advertising expenditure worldwide and the development of ‘Budweiser’ and ‘Bud’ as what might be termed, a global brand.
  10. The worldwide advertising has been by a variety of means and in various media: the sponsorship of large sporting events, point of sale advertising, merchandising, print media and, in some countries, particularly the United States, the electronic media.  It is unnecessary to be precise about advertising in the many different countries in which it has taken place, but it has occurred in the United States, Europe, the Asia-Pacific region and South America.  For example, Anheuser-Busch has advertised in well known and internationally distributed magazines such as Sports Illustrated, Rolling Stone and Life.
  11. Very large sums of money have been spent by Anheuser-Busch sponsoring large scale sporting events broadcast worldwide on television.  Anheuser-Busch has sponsored (by using the word ‘Budweiser’) various teams and events.  It has sponsored the American Football Superbowl.  In 1984 and 1988 it sponsored the United States team at the Olympics.  In 1988 it was sponsor of the Winter Olympics.  In 1992 it sponsored the United States team at the Olympics.  In 1992 it sponsored the United States team at the Winter Olympics.  In 1994 it sponsored the United States team at the Winter Olympics and was the exclusive malt beverage advertiser at those Olympics.  It was an ‘official partner’ of the Olympics at Atlanta in 1996 and it was a sponsor of the United States team at the 1998 Winter Olympics.  Anheuser-Busch has been a major corporate and official sponsor at the soccer World Cup in 1986, 1990, 1994 and 1998.  The World Cup was broadcast on television to a great many countries.  Anheuser-Busch, as part of its sponsorship of that event, from time to time took highly visible stadium billboard advertising, displaying the word ‘Budweiser’, which could be seen on these worldwide television broadcasts...
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  5. Travel Insurance Direct Pty Limited v. Paul F Quinn WIPO Case No. DAU2014-0007
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  8. Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905; (2013) 308 ALR 74
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  10. Winnebago Industries, Inc v Knott Investments Pty Ltd (No 2) [2012] FCA 785; (2012) 293 ALR 108
  11. Australian Health & Nutrition Association Limited trading as Sanitarium Health Food Company v Irrewarra Estate Pty Limited trading as Irrewarra Sourdough [2012] FCA 592; (2012) 292 ALR 101
  12. Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252
  13. Optical 88 Limited v Optical 88 Pty Limited [2011] FCAFC 130; (2011) 197 FCR 67
  14. Organic Marketing Australia Pty Limited v Woolworths Limited [2011] FCA 279
  15. Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380; (2010) 275 ALR 526
  16. Nature’s Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117; (2010) 272 ALR 48
  17. Nature’s Blend Pty Ltd (ACN 126 406 488) v Nestle Australia Ltd (ACN 000 011 316) [2010] FCA 198; (2010) 86 IPR 1
  18. Nutrientwater Pty Ltd v Baco Pty Ltd [2010] FCA 2; (2010) 265 ALR 140
  19. AMI Australia Holdings Pty Limited v Bade Medical Institute (Aust.) Pty Limited (No 2) [2009] FCA 1437; (2009) 262 ALR 458
  20. Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299; 83 IPR 210
  21. Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970
  22. E & J. Gallo Winery v Lion Nathan Australia Pty Limited[2008] FCA 934; (2008) 77 IPR 69
  23. Natural Waters of Viti Limited v Dayals (Fiji) Artesian Waters Limited [2007] FCA 200; (2007) 71 IPR 571
  24. Unilever Australia Ltd v Societe Des Produits Nestlé S.A. [2006] FCA 782; (2006) 154 FCR 165
  25. Kowa Company Ltd v N V Organon [2005] FCA 1282; (2005) 223 ALR 27
  26. Mortgage House of Australia Pty Ltd v Mortgage House International Pty Ltd [2004] FCA 1279; (2005) 63 IPR 600
  27. Wellness Pty Limited v Pro Bio Living Waters Pty Limited [2004] FCA 438; (2004) 61 IPR 242
  28. Designer Entertainment Pty Ltd v D Club Pty Ltd [2003] FCA 1572; 60 IPR 68
  29. Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd [2003] FCA 1517; (2004) AIPC 91-957
  30. Mobileworld Communications Pty Ltd v Q & Q Global Enterprise [2003] FCA 1404; (2004) AIPC 91-955
  31. Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited & Anor [2003] FCA 901; (2003) 132 FCR 326


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