Anheuser Busch, Incorporated (plaintiff) v The Controller of Patents, Trade Marks and Designs and Budweiser Budvar, National Corporations (defendants).

Trademarks - Plaintiff seeking to register its trademark - Refusal by the first defendant to register the trademark due to the existence on the register of two trademarks in the name of the second defendant - Plaintiff seeking to rectify the register by removing these two trademarks on the grounds of non use - Plaintiff required to establish a prima facie case of non use - Statutory declaration filed on behalf of the plaintiff averring to the fact that inquiries had been made and no evidence was found that the trademarks were in use - Statutory declaration filed on behalf of the second defendant denying in general all claims of the plaintiff and specifically stating that the trademarks were in use in other countries with no mention of Ireland.

The High Court (before Mr Justice Costello); judgment delivered 23 October 1996.

WHILE in general an application to remove a trademark from the trademarks register will require detailed particulars from the applicant regarding the inquiries made by it to establish non use, if the registered owner of the trademark in question files a statutory declaration denying all matters claimed by the applicant but specifically pleading that the trademark is in use in other countries with no mention of Ireland, then a statutory declaration filed on behalf of the applicant simply averring to the fact that having made inquiries there is no evidence of the trademark being in use establishes a prima facie case of non use.

The High Court so held in finding that on the evidence before the hearing officer the plaintiff had established a prima facie case of non use and removed the two trademarks in question

Fidelma Macken SC and Denis McDonald BL for the plaintiff. Paul Coughlan BL for the first defendant; Anthony Aston BL for the second defendant.

MR JUSTICE COSTELLO noted that the plaintiff was the proprietor of the trademark "BUDWEISER" in the United States and elsewhere throughout the world. An application to the first defendant to register this trademark in Ireland was refused due to the existence of two trade marks (No 62452 and No 77269) on the registrar in the name of the second defendant.

The judge noted that on 3 September 1980, the plaintiff bad applied to have the register rectified by removing these two trademarks on the basis that they were no longer in use. In August 1981, a statutory declaration had been filed in support of the application on behalf of the plaintiff by the vice president of the company. In May 1982, a replying declaration was filed on behalf of the second defendant. There was no further evidence in the case.

Mr Justice Costello noted that the matter was heard before a Hearing Officer in August 1985. The plaintiff's application was refused, but no reasons were given for the refusal. Judicial review proceedings were issued against the hearing officer requiring him to give reasons for his refusal. This application came before Mr Justice Barron in the High Court, who directed, in May 1987, that the hearing officer was to give reasons for his refusal. This order was appealed but the appeal was later withdrawn. In June 1995, written grounds for the refusal to rectify the register were given by the hearing officer. The present proceedings followed on this and were issued in August 1995.

The reason given by the hearing officer for his refusal to rectify the register was that the plaintiff had not established a prima facie case of non use of the trademarks. The only evidence which was tendered in relation to non use was that of the vice president of the plaintiff contained in the statutory declaration which stated: "I confirm that my company carried out various investigations and inquiries to ascertain whether the registered properties had made any use of the said trademarks and that such inquiries and investigations failed to reveal any instance of use of the said trademarks." Mr Justice Costello noted that the hearing officer stated this evidence was not sufficient as there was no indication of what questions were asked and to whom they were put. As a result, the second defendant was not capable of raising questions regarding this evidence because of its vagueness.

Mr Justice Costello said that in the course of argument, counsel on behalf of the plaintiff averred to the fact that the declaration filed on behalf of the second defendant, while formally denying the matters pleaded in the application, specifically stated at paragraph 4 that: "The proprietors have extensively used the trade marks the subject of registration Nos 62452 and 77269 in relation to the goods covered by the said registration in many countries throughout Europe and in particular the Federal Republic of Germany and the United Kingdom of Great Britain, Northern Ireland and the Isle of Man." It was submitted on behalf of the plaintiff that the inference to be drawn from this was that it was not claimed that there had been any use of the trade mark in Ireland.

Mr Justice Costello said that the declaration filed on behalf of the second defendant would have left any reasonable person with the opinion that the second defendant was not claiming that there had been any use of the trade mark in Ireland. As a result, the evidence of the vice president was perfectly adequate.

Mr Justice Costello stated that generally, detailed particulars must be given to support a case of non use which should include evidence as to what steps were taken to establish non use, what inquiries were made and by whom and to whom were they made. However, he said that there were no hard and fast rules and that every case must depend on its own particular facts.

In this case, the plaintiff was entitled to conclude that the second defendant was not alleging that there had been any use of its trade marks in this country and therefore formal proof was all that was required. Mr Justice Costello stated that the plaintiff by its declaration, had established a prima facie case of non use when viewed in light of the second defendant's declaration. This prima facie case became an overwhelming case of non use when all the evidence was considered as the only use which was averred to by the second defendant was at a trade fair at a date which was not relevant to the proceedings.

Mr Justice Costello said that a hearing officer was required to examine an applicant's evidence to see whether a prima facie case had been raised. There was no obligation on a respondant to file any declaration and it was open to a respondent to argue at the hearing of the action that the evidence of the applicant was insufficient. The judge said that had that been done in this case, the plaintiff would have failed due to its evidence regarding non use. However, as the second defendant choose to file a declaration in this case which only established a use which was not relevant to the application, then the overwhelming weight of evidence was that the second defendant had not used the trade mark within the statutory period.

Mr Justice Costello allowed the plaintiff's appeal and withdrew the two trade marks of the second defendant.

Solicitors: Arthur Cox for the plaintiff; Chief State Solicitor for the first defendant; Orpen Franks for the second defendant.